Promontory Financial Group LLC

Patent Trials and Appeals Board

Mar 30, 2022

2021003299 (P.T.A.B. Mar. 30, 2022)

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. 15/841,690 12/14/2017 Daniel J. Ferranti SVL820170138US01_8150-929 6220 112978 7590 03/30/2022 Cuenot, Forsythe & Kim, LLC 20283 State Road 7, Suite 300 Boca Raton, FL 33498 EXAMINER WAESCO, JOSEPH M ART UNIT PAPER NUMBER 3683 NOTIFICATION DATE DELIVERY MODE 03/30/2022 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DANIEL J. FERRANTI and ANDREW S.H. TING ____________ Appeal 2021-003299 Application 15/841,690 Technology Center 3600 ____________ Before ANTON W. FETTING, JAMES P. CALVE, and NINA L. MEDLOCK, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 21-29. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed February 8, 2021) and Reply Brief (“Reply Br.,” mailed April 26, 2021), and the Examiner’s Answer (“Ans.,” mailed March 1, 2021) and Final Office Action (“Final Act.,” mailed September 8, 2020). Appellant identifies IBM Corporation as the real party in interest (Appeal Br. 1). Appeal 2021-003299 Application 15/841,690 2 CLAIMED INVENTION The Specification states, “[t]he present invention relates generally to a method, system, and computer program product for analytics systems” and, more particularly, to “a method, system, and computer program product for deviation analytics for regulatory risk rating systems” (Spec. ¶ 1). Claims 21, 24, and 27 are the independent claims on appeal. Claim 21, reproduced below with bracketed notations added, is illustrative of the claimed subject matter: 21. A computer-implemented method within a computer client device executing an application and connected to a database, comprising: [(a)] receiving, by the application and from a user of the computer client device, a selection of domain category; [(b)] performing, using an algorithm aggregator of the application, a first database query on the database and constructed using the selected domain category to generate a baseline algorithm score using intermediate values for each of a plurality of operational risk rating algorithms retrieved from the database using the first database query; [(c)] performing, using a weight aggregator of the application, a second database query on the database and constructed using the selected domain category to generate baseline weight factors using a plurality of weight factors retrieved from the database using the second database query; [(d)] receiving, by the application and from the user, a subsequent selection of customized weight configurations and customized algorithm configurations; [(e)] dynamically updating, using a risk rating engine, a baseline operational risk rating for an entity generated using the baseline algorithm score and the baseline weight factors using the received selection of the customized weight configurations and the customized algorithm configurations to generate a customized risk rating; and Appeal 2021-003299 Application 15/841,690 3 [(f)] issuing, to the computer client device and using a deviation analyzer of the application, an alert based upon a deviation value between the baseline operational risk rating and the customized risk value exceeding a predetermined threshold value. REJECTIONS Claims 21-29 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Claims 21-29 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Claims 21-29 are rejected under 35 U.S.C. § 103 as unpatentable over Rosenburg (US 2017/0371921 A1, published Dec. 28, 2017) and Iyer (US 2018/0052994 A1, published Feb. 22, 2018). ANALYSIS Written Description Section 112(a) of the patent statute reads, in part, “[t]he specification shall contain a written description of the invention.” 35 U.S.C. § 112(a). The purpose of this written description requirement is to “ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353-54 (Fed. Cir. 2010) (citation omitted). The requirement, thus, “ensures that the public receives a meaningful disclosure in exchange for being excluded from practicing an invention for a period of time.” Id. at 1354. To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail such that one skilled in the art can reasonably conclude that the inventor had possession of the claimed subject Appeal 2021-003299 Application 15/841,690 4 matter at the time the application was filed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991). In particular, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; see also Ariad, 598 F.3d at 1351; Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112, 84 Fed. Reg. 57, 61-62 (Jan. 7, 2019) (the “2019 § 112 Guidelines”). We are persuaded by Appellant’s argument here that the Examiner erred in rejecting the pending claims under 35 U.S.C. § 112(a) as failing to comply with the written description requirement (Appeal Br. 26-28). Independent claim 21, reproduced above, recites that the claimed method comprises, inter alia, “performing, using an algorithm aggregator . . . , a first database query . . . to generate a baseline algorithm score using intermediate values for each of a plurality of operational risk rating algorithms retrieved from the database using the first database query”; and independent claims 24 and 27 include substantially similar language. The Examiner does not dispute that the claimed subject matter is generally described in paragraph 54 of Appellant’s Specification.2 To the contrary, the 2 Paragraph 54 of the Specification reads, in pertinent part: Algorithm aggregator 314 receives and aggregates a set of algorithms retrieved from database 320. In one embodiment, algorithm aggregator 314 constructs and executes a database query based on domain category 306. . . . In one embodiment, algorithm aggregator 314 receives the query results from the constructed database query then executes the algorithms retrieved in the query results. In this embodiment, algorithm aggregator 314 obtains intermediate values generated by executing the retrieved algorithms associated with domain category 306, then calculates a baseline algorithm score from the generated intermediate values. Appeal 2021-003299 Application 15/841,690 5 Examiner acknowledges as much (Final Act. 9). Instead, the Examiner maintains that the claims are properly rejected as failing to comply with the written description requirement because “the algorithms being used to determine scores and perform limitations are not in the specification or in the drawings” (id.). Appellant argues, and we agree, that where, as here, Appellant does not purport to have invented operational risk rating algorithms and the Examiner does not dispute that such algorithms are conventional and well-known to those of skill in the art, § 112(a) does not require (in order to comply with the written description requirement) that the specifics of these algorithms be disclosed in Appellant’s Specification (Appeal Br. 26-28). The Specification, in our view, describes the claimed invention (at least in paragraph 54) in sufficient detail such that a person of ordinary skill in the art would understand that the inventors had possession of the claimed invention, including the step of “performing, using an algorithm aggregator. . . , a first database query on the database . . . to generate a baseline algorithm score using intermediate values for each of a plurality of operational risk rating algorithms,” at the time the application was filed. Therefore, we do not sustain the Examiner’s rejection of claims 21-29 under 35 U.S.C. § 112(a). Patent-Ineligible Subject Matter Appellant argues the pending claims as a group (Appeal Br. 9). We select independent claim 21 as representative. The remaining claims stand or fall with claim 21. See 37 C.F.R. § 41.37(c)(1)(iv). Under 35 U.S.C. § 101, “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit Appeal 2021-003299 Application 15/841,690 6 exception: “[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). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ - i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217-18 (alteration in original). The U.S. Patent and Trademark Office (the “USPTO”) published revised guidance on January 7, 2019, for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “2019 Revised Guidance”).3 That guidance revised the USPTO’s examination procedure with respect to the first step of the Mayo/Alice framework by (1) “[p]roviding groupings 3 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates the revised guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020). Appeal 2021-003299 Application 15/841,690 7 of subject matter that [are] considered an abstract idea”; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50. The first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next determine, in Step 2A, Prong Two, whether the claim as a whole integrates the recited judicial exception into a practical application, i.e., whether the additional elements recited in the claim beyond the judicial exception, 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. Id. at 54-55. Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. Id. If the claim is determined to be directed to a judicial exception under revised Step 2A, we next evaluate the additional elements, individually and in combination, in Step 2B, to determine whether they provide an inventive concept, i.e., whether the additional elements or combination of elements amounts to significantly more than the judicial exception itself; only then, is the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56. Here, in rejecting the pending claims under 35 U.S.C. § 101, the Examiner determined that independent claim 21 recites organizing and tracking information, Appeal 2021-003299 Application 15/841,690 8 and that the claimed subject matter falls within the three groupings of abstract ideas, i.e., mathematical concepts; certain methods of organizing human activity, and mental processes, enumerated in the 2019 Revised Guidance (Final Act. 10-11). The Examiner also determined that the recited abstract idea is not integrated into a practical application; that independent claim 21 does not include additional elements sufficient to amount to significantly more than the abstract idea itself; and that the remaining claims are patent ineligible for substantially the same reasons (id. at 11-13). Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A) We are not persuaded by Appellant’s argument that the Examiner erred in determining that claim 21 is directed to an abstract idea (Appeal Br. 9-25). 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 claims 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 id. 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 an improvement to technology and/or a technical field. The Specification is titled “DEVIATION ANALYTICS IN RISK RATING SYSTEMS,” and discloses, in the Background section, that “organizations around the world are constantly expanding their operations to other geographic regions, often pursing opportunities in new countries” (Spec. ¶ 2). Yet, although expanding into new geographic regions or countries may present desirable revenue-generating Appeal 2021-003299 Application 15/841,690 9 opportunities, organizations often struggle to navigate through laws and regulations in these new geographic regions, which may be enforced differently from those in countries where the organizations already operate (id. ¶ 12). The United States, for example, has few laws and regulations governing the use of cryptocurrency, beyond tax reporting requirements for gains and losses through cryptocurrency transactions; however, a new geographic region may have regulations that require cryptocurrency transactions above a certain amount to be reported to its securities regulatory agency (id. ¶ 13). Thus, “[u]nbeknownst to the organization, the new cryptocurrency transaction services without the rigorous reporting mechanisms may prompt the new geographic region’s government authorities to sanction the organization under the anti-money laundering (AML) regulations” (id.). “Accordingly, it can be assumed that the risk of violating AML regulations when dealing with cryptocurrency can be significantly higher in the new geographic region as compared to the United States” (id.). The Specification describes that solutions exist that assist an organization in understanding the risks involved in conducting business activities in certain geographic regions and/or countries based on the regulations, sanctions, and other types of regulatory actions established by national and international governing bodies (Spec. ¶ 14). For example, existing systems may evaluate the risk of sanctions of an organization conducting business in a specific country, based on the AML programs administered by Office of Foreign Assets Control (OFAC) of the U.S. Department of Treasury and the at-risk jurisdictions identified by the Financial Crimes Enforcement Network (FinCEN) (id.). The same sets of AML regulations typically apply to organizations within the same industry because these organizations typically offer similar products and services and conduct similar business activities (Spec. ¶ 15). AML risk rating Appeal 2021-003299 Application 15/841,690 10 systems, thus, analyze similar sets of AML data and generate risk ratings that may be similar across organizations within the same industry (id.). The Specification describes that AML risk rating systems include a set of algorithms which analyze the AML regulations and the subject organization to compute the risk ratings, and that this set of algorithms, or values resulting from the algorithms, may be configured or customized by users within the organizations to more accurately evaluate the risk rating in context of these organizations (Spec. ¶ 16). However, according to the Specification, it is difficult to determine whether these customizations to the AML risk rating systems will be consistent with the accepted system standards of other organizations that belong to the same industry (id.). As such, “extreme customizations or configurations of AML risk rating systems may result in the risk ratings being inaccurate which in turn may expose the organizations to AML regulations or even sanctions” (id.). The claimed invention is ostensibly intended to address this issue by providing a system and method that determines the extent of deviation of an updated AML risk ratings system from other risk rating systems categorized within the same industry; the user is then alerted if the deviation exceeds a threshold value (Spec. ¶ 19). In some embodiments, the deviation analysis is triggered in response to a user changing a weighting system of the AML risk rating system; in other embodiments, the deviation analysis can be triggered in response to a user changing the set of algorithms or a methodology through which the AML risk rating is calculated (id.). The Specification describes that, in one embodiment, the system identifies at least one industry associated with the organization (Spec. ¶ 20). The system accepts the changes to the weighting system or algorithms of the AML risk rating system from the user and calculates the risk score resulting from the changes (id.). Appeal 2021-003299 Application 15/841,690 11 The system also ingests and aggregates risk rating values generated from a plurality of AML risk rating systems within the same industry category, and the aggregated data are leveraged to form a baseline risk rating (id.). The system then determines the level of deviation of the risk rating generated by the customizations from the determined baseline risk rating of the industry category (id.). Consistent with this disclosure, claim 21 recites a method within a computer client device executing an application and connected to a database, comprising: (1) “receiving, by the application and from a user of the computer client device, a selection of domain category” 4 (step (a)); (2) generating a baseline algorithm score using intermediate values for each of a plurality of operational risk rating algorithms retrieved from the database, i.e., performing, using an algorithm aggregator of the application, a first database query on the database and constructed using the selected domain category to generate a baseline algorithm score using intermediate values for each of a plurality of operational risk rating algorithms retrieved from the database using the first database query (step (b)); (3) using the selected domain category to generate baseline weight factors using a plurality of weight factors retrieved from the database, i.e., performing, using a weight aggregator of the application, a second database query on the database and constructed using the selected domain category to generate baseline weight factors using a plurality of weight factors retrieved from the database using the second database query (step (c)); (4) generating a baseline operational risk rating using the baseline algorithm score and the baseline weight factors and updating the baseline 4 The Specification discloses that, one embodiment, the domain category includes a type of business industry in which an entity is engaged, e.g., banking, technology, energy, and retail. In other embodiments, the domain category may include a type of operations conducted by an entity, e.g., broker and dealer activities, trading, manufacturing, and distribution (Spec. ¶ 50). Appeal 2021-003299 Application 15/841,690 12 operational risk rating using a selection of customized weight configurations and customized algorithm configurations to generate a customized risk rating, i.e., receiving, by the application and from the user, a subsequent selection of customized weight configurations and customized algorithm configurations; [and] dynamically updating, using a risk rating engine, a baseline operational risk rating for an entity generated using the baseline algorithm score and the baseline weight factors using the received selection of the customized weight configurations and the customized algorithm configurations to generate a customized risk rating (steps (d) and (e)); and (5) “issuing, to the computer client device . . . , an alert based upon a deviation value between the baseline operational risk rating and the customized risk value exceeding a predetermined threshold value” (step (f)). We agree with the Examiner that these limitations, when given their broadest reasonable interpretation, recite: (1) collecting/retrieving information (i.e., a selection of a domain category; a plurality of operational risk rating algorithms; a plurality of weight factors; customized weight configurations; and customized algorithm configurations); (2) analyzing the information (i.e., generating a baseline algorithm score using intermediate values of the operational risk rating algorithms; generating baseline weight factors using the plurality of weight factors; generating a baseline operational risk rating using the baseline algorithm score and the baseline weight factors; and updating the baseline operational risk rating using the customized weight configurations and the customized algorithm to generate a customized risk rating); and (3) reporting the results of the collection and analysis (i.e., issuing an alert to the computer client device if the deviation between the baseline operational risk rating and the customized risk value exceeds a predetermined threshold value). Claim 1 recites that the claimed steps are performed “within a computer client device executing an application.” Yet, these are all acts that could be performed by a human either mentally or manually, e.g., Appeal 2021-003299 Application 15/841,690 13 using pen and paper, without the use of a computer or any other machine. As such, we agree with the Examiner that claim 21 recites a mental process, and, therefore, an abstract idea (Final Act. 10-11). See also 2019 Revised Guidance, 84 Fed. Reg. at 52. Citing the USPTO’s “Subject Matter Eligibility Examples: Abstract Ideas,”5 and addressing each of steps (a) through (f) of claim 21 in turn, Appellant argues that not all instances of collecting information are abstract ideas and that the Examiner’s analysis of these limitations is inconsistent with the 2019 Revised Guidance (Appeal Br. 11-21). Turning first to step (a) of claim 21, Appellant asserts that “receiving, by the application and from a user of the computer client device, a selection of domain category” is no different from “receiving, via the GUI, a user selection to organize each icon based on a specific criteria, wherein the specific criteria is an amount of use of each icon,” as recited in claim 1 of Example 37, “which was determined to be an additional element - not the recitation of an abstract idea” (Appeal Br. 16). And Appellant concludes, “[c]onsequently, the Examiner’s analysis is inconsistent with the guidance provided by the 2019 PEG Examples 37 through 42” (id.). We do not agree that the Examiner improperly characterized “receiving, by the application and from a user of the computer client device, a selection of domain category” as reciting an abstract idea or that the Examiner’s analysis is otherwise inconsistent with the 2019 Revised Guidance. The Federal Circuit has consistently held that collecting and analyzing information, without more, is an abstract idea, and that merely presenting the results of the abstract process of collecting and analyzing information is abstract as an ancillary part of the collection and analysis. 5 Available at https://www.uspto.gov/sites/default/files/ documents/101_examples_37to42_20190107.pdf (hereinafter “Examples”). Appeal 2021-003299 Application 15/841,690 14 See, e.g., Elec. Power Grp. LLC v. Alstom, S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). “As many cases make clear, even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (quoting Elec. Power Grp., 830 F.3d at 1355 (citing cases)). Moreover, “[a] claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit.” In re Mohapatra, 842 F. App’x 635, 638 (Fed. Cir. 2021). Appellant ostensibly would have the Examiner characterize the receipt of a user-selected domain category as an “additional element” rather than an “abstract idea.” Yet, even were we to consider “receiving, by the application and from a user of the computer client device, a selection of domain category” as an additional element under Step 2A, Prong Two, rather than as part of the abstract idea under Prong One, this step of receiving data for subsequent use in the claimed method merely constitutes insignificant extra or pre-solution activity, which, as the 2019 Revised Guidance makes clear, is not sufficient to integrate the recited abstract idea into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 55 (identifying “an additional element adds insignificant extra-solution activity to the judicial exception” as an example in which a judicial exception has not been integrated into a practical application). See also Bilski v. Kappos, 561 U.S. 593, 610-11 (2010) (“Flook [i.e., Parker v. Flook, 437 U.S. 584 (1978)] stands for the proposition that the prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or adding ‘insignificant post-solution activity.”’) (quoting Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)); MPEP 2106.05(g) Appeal 2021-003299 Application 15/841,690 15 (“An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps in order to detect whether the transactions were fraudulent.”). Appellant contends otherwise (Appeal Br. 16). But, step (a) also is substantially different from “receiving, via the GUI, a user selection to organize each icon based on a specific criteria, wherein the specific criteria is an amount of use of each icon,” as recited in claim 1 of Example 37, which, in combination with other additional elements, recited “a specific manner of automatically displaying icons to the user based on usage which provides a specific improvement over prior systems, resulting in an improved user interface for electronic devices” and, thus, integrated the recited abstract idea, i.e., a mental process, into a practical application. Examples 2-3. Appellant further argues that claim 21 cannot properly be characterized as reciting an abstract idea because “generat[ing] a baseline algorithm score using intermediate values for each of a plurality of operational risk rating algorithms retrieved from the database using the first database query” and “generat[ing] baseline weight factors using a plurality of weight factors retrieved from the database using the second database query,” as called for in steps (b) and (c) of claim 21, necessarily require the use of a computer (Appeal Br. 17 (“[U]se of a computer is necessary to perform the limitations at issue . . . . Therefore, the limitations at issue cannot be practically performed in the human mind and do not recite an abstract idea.”)). Yet, the fact that claim 21 may require a computer is not a persuasive reason to argue that the claim is not directed to an abstract idea. Indeed, a substantially similar argument was expressly rejected by the Court in Appeal 2021-003299 Application 15/841,690 16 Alice. Thus, although the claimed invention in Alice involved a computer system acting as a third-party intermediary between two parties, the Court held that “the claims at issue amount to ‘nothing significantly more’ than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer.” Alice Corp., 573 U.S. at 225-26. See also In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (“[N]ot every claim that recites concrete, tangible components escapes the reach of the abstract-idea inquiry.”). Although “a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101,” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011), it does not automatically follow that methods that arguably cannot be performed entirely in the human mind or manually, using pen and paper, are, therefore, not directed to abstract ideas. Appellant argues, as it did with respect to step (a), that “receiving, by the application and from the user, a subsequent selection of customized weight configurations and customized algorithm configurations,” as recited in step (d) of claim 21, is no different from “receiving, via the GUI, a user selection to organize each icon based on a specific criteria, wherein the specific criteria is an amount of use of each icon,” as recited in claim 1 of Example 37, “which was determined to be an additional element - not the recitation of an abstract idea” (Appeal Br. 18). Yet, like step (a), step (d) recites a data gathering step. And, for substantially the same reasons set forth above with respect to step (a), were we to consider step (d) as an additional element under Prong Two rather than as part of the abstract idea under Prong One, it constitutes insignificant extra-solution activity, which is not enough for patent eligibility. Turning to step (e) of claim 21, Appellant argues that “dynamically updating, using a risk rating engine, a baseline operational risk rating for an entity” Appeal 2021-003299 Application 15/841,690 17 does not qualify as a mental process because the claim “require[s] that the baseline operational risk rating is ‘dynamically updated,’ which cannot be practically performed without the use of computer since a human cannot update (using pen and paper) the risk assessment score without delay” (Appeal Br. 18-19). That argument is not persuasive for at least the same reasons set forth above with respect to steps (b) and (c). And although Appellant asserts that “the risk rating engine is not a generic computer element” (id. at 18), we find nothing in the Specification, nor does Appellant direct us to anything in the Specification, to support that assertion. The same also is true of Appellant’s assertion that “an algorithm aggregator of the application,” “a weight aggregator of the application,” and “a deviation analyzer of the application” are not generic computer elements (id. at 20-21). Appellant’s argument with respect to step (f) of claim 21, i.e., “issuing, to the computer client device . . . an alert based upon a deviation value between the baseline operational risk rating and the customized risk value exceeding a predetermined threshold value,” is substantially similar to Appellant’s argument with respect to steps (a) and (d), and, for much the same reasons, is unpersuasive of Examiner error. Appellant notes that the Examiner characterized this limitation as “[t]ransmitting information,” i.e., as a mental process (Appeal Br. 19). And Appellant argues that the Examiner’s characterization is inconsistent with the USPTO’s 2019 Examples 41 and 42 where “transmitting the ciphertext word signal CA to the second computer terminal over a communication channel” in Example 41 and “transmitting the message to all of the users over the computer network in real time, so that each user has immediate access to up-to-date patient information” in Example 42 was determined to be an additional element, not the Appeal 2021-003299 Application 15/841,690 18 recitation of an abstract idea (id. at 19-20). Yet, similar to data gathering steps (a) and (d), even were we to consider “issuing, to the computer client device . . . an alert” as an additional element under Step 2A, Prong Two, this element does not add any meaningful limitations to the abstract idea; instead, it is merely directed to the insignificant post-solution activity of transmitting data. Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016) (holding that printing or downloading generated menus constituted insignificant extra-solution activity). Turning to Step 2A, Prong Two of the 2019 Revised Guidance, Appellant argues that even if claim 21 recites an abstract idea, claim 21 is nonetheless patent eligible because the claim is directed to a technological improvement (Appeal Br. 23-25). The 2019 Revised Guidance references MPEP, Ninth Edition (rev. Jan 2018) (available at https://www.uspto.gov/web/offices/pac/mpep/old/mpep_E9R08- 2017.htm) § 2106.05(a)-(c) and (e) in non-exhaustively listing considerations indicative that an additional element or combination of elements may have integrated a recited judicial exception into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55. In particular, the Guidance describes that an additional element may have integrated the judicial exception into a practical application if, inter alia, the additional element reflects an improvement in the functioning of a computer or an improvement to other technology or technical field. Id. At the same time, the Guidance makes clear that merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea; adding insignificant extra-solution activity to the judicial exception; or only generally linking the use of the judicial exception to a particular technological environment or field are not sufficient to integrate the judicial exception into a practical application. Id. Appeal 2021-003299 Application 15/841,690 19 Appellant argues here that the “claimed invention represents an improvement to risk assessment software and systems” in that it “generally address[es] and solve[s] the above-described problems” (i.e., the difficulty in determining whether user customizations to the AML risk rating systems will be consistent with the accepted system standards, and the associated risk that extreme customizations or configurations of AML risk rating systems may result in the risk ratings being inaccurate) and “other problems related to deviation analytics for risk rating systems” (Appeal Br. 24). Yet, we are not persuaded that determining whether user customizations to a AML risk rating system will be consistent with accepted system standards is a technical problem, as opposed to a business problem, or that determining the extent of deviation between a baseline operational risk rating and a customized risk value, and issuing a user alert if the deviation exceeds a predetermined threshold value is a technological improvement, as opposed to an improvement to the abstract idea of determining an AML risk rating, which is not enough for patent eligibility. See SAP Am., 898 F.3d at 1170 (“[P]atent law does not protect such claims[, i.e., claims to an asserted advance in the realm of abstract ideas], without more, no matter how groundbreaking the advance.”). This is particularly so, where, as here, we find no indication in the Specification that the operations recited in claim 21 require any specialized computer hardware or other inventive computer components, invoke any allegedly inventive programming, or that the claimed invention is implemented using other than generic computer components as tools operating in their ordinary capacity. The Specification discloses that although expanding into new geographical regions may present “plenty of opportunities,” organizations struggle to navigate laws and regulations, including AML regulations, in these new geographical regions (Spec. ¶ 12). Existing AML risk rating systems provide a means for Appeal 2021-003299 Application 15/841,690 20 analyzing AML regulations and computing risk ratings; however, the Specification describes that extreme user customizations of these systems may result in inaccurate risk ratings (id. ¶¶ 14-16). Therefore, the claimed invention provides a system and method for determining the level of deviation of the risk rating generated by the customizations from the baseline risk rating of the industry category and alerting the user if the deviation level exceeds a predetermined threshold (id. ¶ 19). It, thus, clearly appears from the Specification that the focus of the claimed invention is on achieving a business objective (i.e., providing an organization with an accurate reflection of its AML risk), and not on any claimed means for accomplishing that goal that improves technology. We conclude, for the reasons outlined above, that claim 21 recites a mental process, i.e., an abstract idea, and that the additional elements recited in the claim beyond the abstract idea, i.e., “a computer client device executing an application” and “a database,” are no more than generic computer components used as tools to perform the recited abstract idea. As such, they do not integrate the abstract idea into a practical application. See Alice Corp., 573 U.S. at 223-24 (“[W]holly generic computer implementation is not generally the sort of ‘additional featur[e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)); 2019 Revised Guidance, 84 Fed. Reg. at 54 (identifying “an additional element adds insignificant extra-solution activity to the judicial exception” as an example in which a judicial exception has not been integrated into a practical application). Accordingly, we agree with the Examiner that claim 21 is directed to an abstract idea. Appeal 2021-003299 Application 15/841,690 21 Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B) Having determined under step one of the Mayo/Alice framework that claim 21 is directed to an abstract idea, we next consider under Step 2B of the 2019 Revised Guidance, the second step of the Mayo/Alice framework, whether claim 21 includes additional elements or a combination of elements that provides an “inventive concept,” i.e., whether an additional element or combination of elements adds specific limitations beyond the judicial exception that are not “well- understood, routine, conventional activity” in the field (which is indicative that an inventive concept is present) or simply appends well-understood, routine, conventional activities previously known to the industry to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 56. Appellant argues that the rejection of claim 21 cannot be sustained and that an inventive concept is present because as argued below regarding the Examiner’s rejection under 35 U.S.C. § 103, the additional elements associated with the claimed “performing, using an algorithm aggregator of the application, a first database query on the database and constructed using the selected domain category to generate a baseline algorithm score using intermediate values for each of a plurality of operational risk rating algorithms retrieved from the database using the first database query” are not disclosed by the prior art. Consequently, they are not well-understood, routine, conventional activity (Appeal Br. 26). But, Appellant, thus, misapprehends the controlling precedent. Neither a finding of novelty nor a non-obviousness determination automatically leads to the conclusion that the claimed subject matter is patent eligible. Although the second step in the Mayo/Alice framework is termed a search for an “inventive concept,” the analysis is not an evaluation of novelty or non-obviousness, but rather, a search for “an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon Appeal 2021-003299 Application 15/841,690 22 the [ineligible concept] itself.’” Alice Corp., 573 U.S. at 217-18 (citation omitted). “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90; see also Diehr, 450 U.S. at 188-89 (“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”). We are not persuaded, on the present record, that the Examiner erred in rejecting independent claim 21 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection of claim 21, and claims 22-29, which fall with claim 21. Obviousness Independent Claim 21 and Dependent Claims 22 and 23 We are persuaded by Appellant’s argument that the Examiner erred in rejecting independent claim 21 under 35 U.S.C. § 103 because Rosenburg, on which the Examiner relies, does not disclose or suggest performing, using an algorithm aggregator of the application, a first database query on the database and constructed using the selected domain category to generate a baseline algorithm score using intermediate values for each of a plurality of operational risk rating algorithms retrieved from the database using the first database query[,] limitation (b), as recited in claim 21 (Appeal Br. 29-34). The Examiner cites paragraphs 10, 12, 22, 31, 64, 115, and 171 of Rosenberg as disclosing the argued limitation (Final Act. 7-8, 14). We, however, agree with Appellant that the cited portions of Rosenburg fail to meet the claim language. Appeal 2021-003299 Application 15/841,690 23 The Examiner points, for example, to paragraph 171 of Rosenburg as “an algorithm aggregator” (Final Act. 7, 14). There, Rosenburg discloses that “[a] back-end [Sentiment -Based Risk Analyzer] SBRA (e.g., runtime JAVA component) may perform scoring by applying an algorithm to calculate a base score for each document.” But there is no mention of an “algorithm aggregator” in paragraph 171 and no indication that the algorithm is retrieved from a database using a first database query, as called for in claim 21. Rosenburg discloses a database in paragraph 10 for “storing a metadata index and a corpora of documents and a GUI,” and refers in paragraph 12 to a “query request.” But Rosenburg does not disclose that the database includes “a plurality of operational risk rating algorithms” or that the query is for “a plurality of operational risk rating algorithms,” as called for in claim 21. Rosenburg also describes the base score (which paragraph 171 discloses is calculated by applying an algorithm) not as a risk rating or risk score but as a value that determines the impact (negative or positive) that another piece of information has on the risk score (see Rosenburg ¶ 140 (“A Base Score based on a document’s sentiment may be calculated to determine overall impact (negative or positive) of an information source to the Risk Score.”)). We are not persuaded, on the present record, that the Examiner properly rejected claim 21 under 35 U.S.C. § 103. Therefore, we do not sustain the Examiner’s rejection. For the same reasons, we also do not sustain the Examiner’s rejection of dependent claims 22 and 23. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims are nonobvious if the independent claims from which they depend are nonobvious”). Appeal 2021-003299 Application 15/841,690 24 Independent Claims 24 and 27 and Dependent Claims 25, 26, 28, and 29 Independent claims 24 and 27 include language substantially similar to the language of claim 21, and stand rejected based on the same rationale applied with respect to claim 21 (Final Act. 14). Therefore, we do not sustain the Examiner’s rejection, under 35 U.S.C. § 103, of independent claims 24 and 27, and claims 25, 26, 28, and 29, which depend therefrom, for the same reasons set forth above with respect to independent claim 21. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21-29 112(a) Written Description 21-29 21-29 101 Eligibility 21-29 21-29 103 Rosenburg, Iyer 21-29 Overall Outcome 21-29 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED