Johnson Controls Technology Company

Patent Trials and Appeals Board

Oct 25, 2021

2021004245 (P.T.A.B. Oct. 25, 2021)

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.
16/143,037 09/26/2018 Sajjad Pourmohammad 18-0634-US (116048-0465) 3546
146598 7590 10/25/2021
Foley & Lardner LLP
3000 K Street N.W.
Suite 600
Washington, DC 20007-5109
EXAMINER
HENRY, MATTHEW D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
10/25/2021 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):
ipdocketing@foley.com
uspatents@jci.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SAJJAD POURMOHAMMAD, JAN R. HOLLIDAY,
ERIC THIEBAUT-GEORGE, DONAGH S. HORGAN,
SANJEET PHATAK, and YOUNGCHOON PARK

Appeal 2021-004245
Application 16/143,037
Technology Center 3600
____________

Before ANTON W. FETTING, TARA L. HUTCHINGS, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEYERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 1–21, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was
held on October 8, 2021.

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 Johnson
Controls Technology Company. Appeal Br. 2.
Appeal 2021-004245
Application 16/143,037

2
We AFFIRM.
CLAIMED INVENTION
Appellant’s claimed invention generally relates to “building security
systems for assets (e.g., buildings, building sites, building spaces, people,
cars, equipment, etc.),” and “more particularly to security platforms for
handling alarms for the building, risk analytics, and risk mitigation.”
Spec. ¶ 2.
Claims 1, 11, and 20 are the independent claims on appeal. Claim 1,
reproduced below, with modified formatting and bracketed notations, is
illustrative of the claimed subject matter.
1. A building management system comprising:
[a] one or more computer-readable storage media having
instructions stored thereon that, when executed by one or more
processors, cause the one or more processors to:
[b] receive a threat, the threat comprising a particular
threat type, the threat indicating an incident affecting a risk value
associated with an asset;
[c] determine, based on the threat and the asset, the risk
value at a first point in time;
[d] select a decay model based on the particular threat
type; and
[e] update the risk value at a plurality of points in time
after the first point in time with the decay model causing the risk
value to decay.
REJECTIONS2
1. Claims 1–21 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception without significantly more.

2 The Examiner indicates that claims 9, 10, and 19 “are allowable over the
prior art, but remain rejected under § 101.” Final Act. 28. A rejection under
35 U.S.C. § 112(b) of claim 21 was withdrawn. Adv. Act. 3.
Appeal 2021-004245
Application 16/143,037

3
2. Claims 1–8, 11, 12, 14–18, 20, and 21 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Baikalov (US 2016/0226905 A1, pub.
Aug. 4, 2016) and Miltonberger (US 2010/0094768 A1, pub. Apr. 15, 2010).
3. Claim 13 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Baikalov, Miltonberger, and McNair (US 2004/0193451 A1, pub.
Sept. 30, 2004).
ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues claims 1–21 as a group. Appeal Br. 7–11. We
select independent claim 1 as representative. The remaining claims stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
35 U.S.C. § 101 Framework
Section 101
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 U.S. 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. E.g., 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 Court’s two-part framework, described in Mayo and Alice.
Alice, 573 U.S. 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
Appeal 2021-004245
Application 16/143,037

4
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, 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 (1854))); 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
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 187; 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 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
Appeal 2021-004245
Application 16/143,037

5
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 Section 101 Guidance
We are also guided by U.S. Patent and Trademark Office (“USPTO”)
Guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”), incorporated into
the MANUAL OF PATENT EXAMINING PROCEDURE §§ 2104–06, Rev. 10.2019
(“MPEP”) in June 2020. “The guidance sets out agency policy with respect
to the USPTO’s interpretation of the subject matter eligibility requirements
of 35 U.S.C. [§] 101 in view of decisions by the Supreme Court and the
Federal Circuit.” Guidance, 84 Fed. Reg. at 51.3 Although “[a]ll USPTO

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance, 84
Fed. Reg. USPTO, October 2019 Update: Subject Matter Eligibility (the
“October 2019 Update”) (available at https://www.uspto.gov/sites/default/
files/documents/peg_oct_update.pdf).
Appeal 2021-004245
Application 16/143,037

6
personnel are, as a matter of internal agency management, expected to
follow the guidance,” the Guidance “does not create any right or benefit,
substantive or procedural, enforceable by any party against the USPTO.” Id.
The Guidance, by its terms, applies to all applications, and to all patents
resulting from applications, filed before, on, or after January 7, 2019. Id.
at 50.
Under USPTO Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including laws of nature, natural phenomena,
and products of nature (see MPEP § 2106.04(II)(A)(1), 2106.04(b))
(“Step 2A, Prong One”); and (2) additional elements that integrate the
judicial exception into a practical application (see id. § 2106.04(II)(A)(2),
2106.04(d)) (“Step 2A, Prong Two”).4
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the additional elements, individually or in combination,
provide an inventive concept. See MPEP § 2106(III), 2106.05. “An
inventive concept ‘cannot be furnished by the unpatentable law of nature (or
natural phenomenon or abstract idea) itself.’” Id. § 2106.05 (quoting
Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016)).
Among the considerations in determining whether the additional elements,
individually or in combination, amount to significantly more than the

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance — Section III(A)(2), 84 Fed. Reg.
at 54–55; MPEP § 2106.04(d).
Appeal 2021-004245
Application 16/143,037

7
exception itself, we look to whether they add a specific limitation beyond the
judicial exception that is not “well-understood, routine, conventional” in the
field or simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. MPEP § 2106.05(II); Guidance, 84 Fed. Reg. at 56.
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework and Step 2A, Prong
One of USPTO Guidance, the Examiner determines that exemplary
independent claim 1 recites “analyzing risk for a certain business,” and as
such, is “directed towards the abstract idea of Organizing Human Activity,
where analyzing risk for a business is specifically a commercial interaction.”
Final Act. 5. More particularly, the Examiner states that claim 1 is
directed toward receiv[ing] a threat, the threat comprising a
particular threat type, the threat indicating an incident affecting
a risk value associated with an asset; determin[ing], based on the
threat and the asset, the risk value at a first point in time;
select[ing] a decay model based on the particular threat type; and
update[ing] the risk value at a plurality of points in time after the
first point in time with the decay model causing the risk value to
decay (Organizing Human Activity and Mathematical
Relationships), which are considered to be abstract ideas.
Id. at 8 (citing Guidance, MPEP § 2106.05). According to the Examiner, the
independent claims may be characterized as a certain method of organizing
human activity because the claim limitations recite “analyzing threat to
determine risk values by utilizing decay models, where determining risk for
a building management system is managing commercial systems.” Id. at 9.
Under Prong Two of USPTO Guidance, the Examiner determines that the
identified judicial exception is not integrated into a practical application
Appeal 2021-004245
Application 16/143,037

8
because the additional elements are merely instructions to apply the abstract
idea to a computer and “insignificant extra solution activity.” Id.
In response, Appellant asserts that the Examiner improperly
characterizes the subject matter of independent claim 1 as reciting an
abstract idea because “‘analyzing risk for a certain business’ is not
‘Organizing Human Activity.’” Appeal Br. 7 (citing Final Act. 5).
Appellant also argues that even if claim 1 is directed to an abstract idea, “the
system of claim 1 integrates ‘the exception into a practical application’”
because it “relates to a particular improvement for modeling threats to better
reflect an actual threat level over time.” Id. at 9.
Under the first step of the Mayo/Alice framework and Step 2A of the
USPTO Guidance, we first determine to what claim 1 is directed, i.e.,
whether claim 1 recites an abstract idea and if so, whether claim 1 is directed
to that abstract idea. The Federal Circuit has explained that “the ‘directed
to’ inquiry applies a stage-one filter to claims, considered in light of the
specification, based on whether ‘their character as a whole is directed to
excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the
claim is on a specific improvement in relevant technology or on a process
that itself qualifies as an “abstract idea” for which computers are invoked
merely as a tool. See Enfish, LLC, 822 F.3d at 1335–36. Here, it is clear
from the Specification, including the claim language, that claim 1 focuses on
an abstract idea, and not on any improvement to technology and/or a
technical field.
Appeal 2021-004245
Application 16/143,037

9
Reciting a Judicial Exception
In making this determination, we note that the Specification is titled
“BUILDING RISK ANALYSIS SYSTEM WITH RISK DECAY,” and
“relates generally to building security systems for assets (e.g., buildings,
building sites, building spaces, people, cars, equipment, etc.).” Spec. ¶ 2.
The Specification further identifies that the claimed invention “relates more
particularly to security platforms for handling alarms for the building, risk
analytics, and risk mitigation.” Id.
According to the Specification, it is well known that “security
platforms provide threat information to operators and analysts monitoring all
the activities and data generated from building sensors, security cameras,
access control systems, etc.” Spec. ¶ 3. The Specification describes that
these data include internal data indicative of alarms, i.e., events occurring in
the building that indicate an intrusion, a fire, or any other dangerous event,”
but may also include threat data collected from external reporting sources.
Id. The Specification identifies that
due to the volume of data for the activities and the dynamic
nature of the activities, a large amount of resources are required
by the security platform to process the data. Since there may be
many alarms, not only does the security platform require a large
amount of resources, a high number of security operators and/or
analysts are required to review and/or monitor the various
different alarms or systems of the building.
Id. The Specification further identifies that
[u]nderstanding the relationship between an asset and the set of
threats is a complex task that require an infrastructure that can
gather the relevant data from different sources, analyze the data
in multiple processing steps and generate rich[,] yet easy to
understand[,] information to security operators and site monitors
so that these personal [sic] can take appropriate actions.
Appeal 2021-004245
Application 16/143,037

10
Id. ¶ 211. To address these drawbacks, the present invention “generate[s]
risk information for use in prioritization of alarms, presenting users, with
contextual threat and/or asset information, reducing the response time to
threats by raising the situational awareness, and automating response
actions.” Id.
Consistent with this disclosure, independent claim 1 recites “[a]
building system” comprising “one or more computer-readable storage
media” and “one or more processors” (limitation [a]). The system includes
instructions to (1) receive information, i.e., “receive a threat . . . indicating
an incident affecting a risk value associated with an asset” (limitation [b]);
(2) analyze information, i.e., “determine . . . the risk value at a first point in
time” based on the information received (limitation [c]); select a model
based for additional analysis, i.e., “select a decay model based on the
particular threat type” (limitation [d]); and update the analysis, i.e., “update
the risk value at a plurality of points in time after the first point in time with
the decay model causing the risk value to decay” (limitation [e]). Appeal
Br. 28 (Claims App.).
When considered collectively and under the broadest reasonable
interpretation, independent claim 1, as summarized above, recites a system
for “analyzing risk for a certain business” based on a series of instructions
for receiving threat information, analyzing the threat information, selecting a
model for further analysis, and then updating the analysis at subsequent
times.5 This is an abstract idea which may be characterized as a “[c]ertain

5 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
Appeal 2021-004245
Application 16/143,037

11
method[] of organizing human activity—fundamental economic principles
or practices (including hedging, insurance, mitigating risk).” Guidance,
84 Fed. Reg. at 52; MPEP § 2106.04(a)(2)(II). This is consistent with the
Examiner’s characterization. Final Act. 5.6
As such, we disagree with the Appellant’s assertion that the Examiner
improperly characterizes independent claim 1 as being directed to a
“[c]ertain method[] of organizing human activity.” Appeal Br. 7. Rather,
we find the subject matter of claim 1 to be similar to other concepts our
reviewing court has held to be abstract. For example, the Federal Circuit has
held abstract the concepts of “verifying the validity of a credit card
transaction over the Internet” and detecting fraud in CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370, 1374 (Fed. Cir. 2011),
“detecting fraud and/or misuse in a computer environment based on
analyzing data” according to “one of several rules” in Fairwarning IP, LLC
v. Iatric Systems, Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016),
“identification of unwanted [illicit] files in a particular field (i.e., a computer
network) and . . . data collection related to such identification” in Intellectual
Ventures I LLC v. Erie Indemnity Co., 711 F. App’x 1012, 1015 (Fed.

(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
6 The Examiner also determines that exemplary independent claim 1 recites
mathematical relationships “because the claimed limitations are analyzing
threat to determine risk values by utilizing decay models, which are
mathematical equations.” Final Act. 9. Because we agree with the
Examiner that exemplary independent claim 1 recites a method of
organizing human activity, i.e., “analyzing risk for a certain business” (Final
Act. 5), we need not, and do not, address Appellant’s arguments regarding
that determination (Appeal Br. 7–9, 10).
Appeal 2021-004245
Application 16/143,037

12
Cir. 2017) (“Erie”), and the process of gathering and analyzing information
of a specified content and displaying the result in Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). Here, exemplary
claim 1 involves nothing more than analyzing risk by receiving threat
information, analyzing the threat information, selecting a model for further
analysis, and then updating the analysis at subsequent times without any
particular inventive technology — an abstract idea. See Electric Power,
830 F.3d at 1354.
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, in determining whether the claim is directed to this abstract
idea, we next consider whether the claim recites additional elements that
integrate the judicial exception into a practical application.
Integration into a Practical Application
We look to whether the claim “appl[ies], rel[ies] on, or use[s] 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.” Guidance, 84 Fed. Reg. at 54; MPEP
§ 2106.04(d). Here, the Examiner identifies the additional elements of
claim 1 as a “building management system, computer readable storage
media, instructions, [and] processors.” Final Act. 9. According to the
Examiner, these additional elements “would not account for additional
elements that integrate the judicial exception (e.g. abstract idea) into a
practical application because the claimed structure merely adds the words to
apply it with the judicial exception and mere instructions to implement an
Appeal 2021-004245
Application 16/143,037

13
abstract idea on a computer.” Id. (citing Guidance; MPEP § 2106.05). We
agree with the Examiner.
As is clear from the Specification, there is no indication that the
instructions recited in claim 1 require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, invoke any
asserted inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”); see also Spec. ¶ 216 (“Via the network
104, the risk analytics system 106 can be configured to ingest (receive,
process, and/or standardize) data from data sources 102.”); ¶ 226 (“The risk
analytics system 106 can be a computing system configured to perform
threat ingesting, threat analysis, and user interfaces management. The risk
analytics system 106 can be a server, multiple servers, a controller, a desktop
computer, and/or any other computing system.”); ¶ 228 (“The processor(s)
112 can be a general purpose or specific purpose processor.”). Independent
claim 1, unlike the claims found non-abstract in prior cases, uses generic
computer technology to receive and analyze information to assess risk, and
does not recite an improvement to a particular computer technology. Cf.
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314–15
(Fed. Cir. 2016) (finding claims not abstract because they “focused on a
specific asserted improvement in computer animation.”).
Appellant argues that claim 1 is not directed to an abstract idea
because it “relates to a particular improvement for modeling threats to better
Appeal 2021-004245
Application 16/143,037

14
reflect an actual threat level over time.” Appeal Br. 9. Appellant asserts that
limitations [c], [d], and [e] recite the particular improvement. Id. However,
analyzing information (limitation [c]), selecting a model (limitation [d]), and
updating the analysis periodically (limitation [e]) do not comprise a
particular improvement as they do not “enable[] a computer . . . to do things
it could not do before.” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299,
1305 (Fed. Cir. 2018). Rather, the claim’s focus is “not a physical-realm
improvement but an improvement in a wholly abstract idea,” that is not
eligible for patenting. SAP Am. Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018); see also Bridge & Post, Inc. v. Verizon Commc’ns, Inc.,
778 F. App’x 882, 893 (Fed. Cir. 2019) (“Where a claim’s ‘essential
advance’ is abstract, a novel method of performing that advance ‘does not
avoid the problem of abstractness.’” (quoting Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016))). The benefits here
“flow from performing an abstract idea in conjunction with” well-known
computer structure. BSG Tech LLC v. Buyseasons, Inc., 899 F.3d
1281, 1289 (Fed. Cir. 2018).
For the forgoing reasons, we are not persuaded of error in the
Examiner’s determination that the additional elements of claim 1 do not
integrate the judicial exception into a practical application, as the term is
used in USPTO Guidance, and we are not persuaded of error in the
Examiner’s determination that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework
Under the second step in the Alice framework and USTPO Guidance
Step 2B, we “[e]valuat[e] additional elements to determine whether they
amount to an inventive concept [which] requires considering them both
Appeal 2021-004245
Application 16/143,037

15
individually and in combination to ensure that they amount to significantly
more than the judicial exception itself.” MPEP § 2106.05(I).
Here, we find supported the Examiner’s determination that the
limitations of claim 1, taken individually and as an ordered combination, do
not amount to significantly more than the judicial exception, that additional
elements, i.e., “building management system, computer readable storage
media, instructions, [and] processors” (Final Act. 11) are “recited at a high
level of generality,” “perform conventional functions and are considered to
be general purpose computer components,” and “generally link of the use of
an abstract idea to a particular technological environment.” Id. (citing Spec.
¶¶ 422–432). See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed.
Cir. 2014) (“[T]he claimed sequence of steps comprises only ‘conventional
steps, specified at a high level of generality,’ which is insufficient to supply
an ‘inventive concept.’”) (citing Alice, 573 U.S. at 221); see also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(claims reciting, inter alia, sending messages over a network, gathering
statistics, using a computerized system to automatically determine an
estimated outcome, and presenting offers to potential customers found to
merely recite “‘well-understood, routine conventional activit[ies],’ either by
requiring conventional computer activities or routine data-gathering steps”
(alteration in original)); SAP Am., 898 F.3d at 1167–68 (“[S]electing certain
information, analyzing it using mathematical techniques, and reporting or
displaying the results of the analysis” were “basic functions” of a
computer.).
Other than asserting that the system in claim 1 including instructions
executed “to ‘select a decay model based on the particular threat type’ and
Appeal 2021-004245
Application 16/143,037

16
‘update the risk value at a plurality of points in time after the first point in
time with the decay model causing the risk value to decay’ (claim 1,
emphasis added) [are] not ‘well understood, routine, conventional activity’”
(Appeal Br. 11), Appellant does not offer additional reasoning or argument
why these limitation “are not well-understood, routine, conventional activity
in the field, which is indicative that an inventive concept may be present.”
Guidance, 84 Fed. Reg. at 56. Here, we find “select[ing] a decay model”
and subsequently “updat[ing] the risk value” may be performed manually
without a computer. Moreover, claim 1 simply recites the functional results
to be achieved of receiving threat information, analyzing the threat
information, selecting a model for further analysis, and then updating the
analysis at subsequent times to provide an updated threat assessment. The
claim “provides only a result-oriented solution[] with insufficient detail for
how a computer accomplishes it. Our law demands more.” Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed.
Cir. 2017).
Furthermore, we agree with the Examiner that the elements Appellant
relies on as being “significantly more” are “limitations directed towards the
abstract idea” or are elements that simply “further narrow[] the abstract idea
by determining what decay model to use based on the threat and update the
risk value” and “determining an updated risk value.” Ans. 4–5. “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
invention ‘significantly more’ than that ineligible concept.” BSG Tech, 899
F.3d at 1290.
Appeal 2021-004245
Application 16/143,037

17
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 2–21, which fall with
independent claim 1.

Obviousness
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1, 11, and 20 under 35 U.S.C. § 103(a) because
the combination of Baikalov and Miltonberger fails to disclose or suggest
“select[ing] a decay model based on the particular threat type,” as recited by
limitation [d] of independent claim 1, and similarly recited by independent
claims 11 and 20. Appeal Br. 11–14.
The Examiner maintains the rejection is proper. Final Act. 15 (citing
Baikalov ¶ 27, Fig. 2; Miltonberger ¶¶ 156, 157, 162, 175, 177, 193, 200,
302, Claim 64). However, we agree with Appellant that there is nothing in
the cited portions that discloses or suggests the argued limitation.
Baikalov is directed to a risk scoring system for threat assessment.
Baikalov, Abstr. More particularly, Baikalov discloses a system “for
detecting and preventing internal and external threats to technology
infrastructure, information assets and intellectual property of enterprises and
other organizations, and more particularly to assessing threats based on a
mix of behavioral and direct indicators.” Id. ¶ 2. Baikalov further discloses
that
[e]ach threat may have a different aging factor that may be
selected empirically based upon the type of threat, previous
observations and other information such as experience with the
particular type of threat. Effectively, the aging factor decreases
the weight accorded to historical determinations of threat score
Appeal 2021-004245
Application 16/143,037

18
to avoid overly biasing a current risk score determination with
the scores for previous threats which may have been based upon
different conditions and different threat indicators.
Id. ¶ 27.
Miltonberger is directed to a fraud detection and analysis system.
Miltonberger ¶ 5. More particularly, Miltonberger that its risk engine
utilizes an account model to
generate a first probability of observing event parameters
assuming the user is conducting the next event. The risk engine
uses a fraud model to generate a second probability of observing
event parameters assuming a fraudster is conducting the next
event. The risk engine generates a risk score, using the first and
second probabilities, which indicates the relative likelihood the
next event is performed by the user.
Id. at Abstr. Miltonberger describes that its system uses a time decay model
or exponential decay function that analysis “the relevancy of an observed
event decreases over time.” Id. ¶¶ 156–157.
We have reviewed the cited portions of Baikalov in combination with
Miltonberger, and agree with Appellant that the cited portions fail to
disclose or suggest “select[ing] a decay model based on the particular threat
type,” as recited by limitation [d] of independent claim 1, and similarly
recited by independent claims 11 and 20. To address this limitation, the
Examiner relies on the “aging factor” disclosed in Baikalov, but
acknowledges that Baikalov does not disclose the recited “decay model.”
Final Act. 15. To address this deficiency, the Examiner relies on the use of a
“decay model” in Miltonberger. Id. And, based on their respective
disclosures, the Examiner concludes
The teachings of Baikalov et al. and Miltonberger are
related because both are analyzing risk. Therefore it would have
been obvious to one of ordinary skill in the art at the effective
Appeal 2021-004245
Application 16/143,037

19
filing date of the claimed invention to have modified the risk
analysis system utilizing decay over time of Baikalov et al. to
incorporate the decay models of Miltonberger in order to better
represent how the risk values change as time passes for certain
events, therefore making the risk analysis more accurate.
Id.
In response, Appellant asserts that the asserted combination
fails to disclose or suggest the argued limitation because “[t]he system
of Baikalov selects different aging factors, e.g., different values for
aging. However, an aging factor only controls a rate decays.” Appeal
Br. 12 (emphases omitted). Appellant explains that Miltonberger only
discloses a single model and because “there is only one model in
Miltonberger, the system does not ‘select a decay model based on the
particular threat type’ (claim 1), but rather uses the same model for all
threat types.” Id. Thus, Appellant argues that
[e]ven if the parameter selection of Baikalov could be
properly combined with the model of Miltonberger, the result of
the combination would not be a system that operates to “select a
decay model based on the particular threat type.” (claim 1).
Instead, the result of the combination would be one model with
different rates of decay.”
Id. at 13. We agree with Appellant.
Here, the Examiner suggests “modif[ying] the risk analysis system
utilizing decay over time of Baikalov et al. to incorporate the decay models
of Miltonberger” (Final Act. 15), but the Examiner only points to one decay
model in Miltonberger. We acknowledge that the independent claims do not
call for more than one model, but without more than one model, there would
be no need to select a model, nor would one model satisfy the requirement
that the model be selected based on a particular threat type.
Appeal 2021-004245
Application 16/143,037

20
In the Answer, the Examiner suggests that “it would have been
obvious to swap the decay model (a variable equation that effects change
over time) out for the aging factor (which is a variable that effects change
over time) to more empirically define how the risk threat progresses over
time.” Ans. 6. The difficulty with the Examiner’s reasoning here is that the
Examiner is again relying on “the decay models of Miltonberger” (see Ans.
6; Final Act. 15) when the Examiner only points to the one decay model in
Miltonberger in the Final Office Action and the Answer. Thus, we agree
with Appellant that “at most[,] the combination of Baikalov and
Miltonberger would be one model operating with different decay parameters
causing the one model to decay risk more rapidly or more slowly.” Appeal
Br. 13.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1, 11, and 20 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the Examiner’s rejections of claims 2–8, 12–
18, and 21, which depend therefrom.

Appeal 2021-004245
Application 16/143,037

21
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–21 101 Eligibility 1–21

1–8, 11, 12,
14–18, 20,
21
103 Baikalov,
Miltonberger
1–8, 11, 12,
14–18, 20, 21
13 103 Baikalov,
Miltonberger,
McNair
13
Overall
Outcome
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).

AFFIRMED