NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

IN RE: MARK ALFRED GREENSTEIN,

Appellant

______________________

2019-1520

______________________

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 14/088,593.

______________________

Decided: December 10, 2019

______________________

MARK ALFRED GREENSTEIN, Bethesda, MD, pro se. 

 JOSEPH MATAL, Office of the Solicitor, United States 

Patent and Trademark Office, Alexandria, VA, for appellee 

Andrei Iancu. Also represented by THOMAS W. KRAUSE,

AMY J. NELSON. 

 ______________________

Before NEWMAN, DYK, and REYNA, Circuit Judges.

NEWMAN, Circuit Judge.

Mark A. Greenstein appeals the decision of the Patent 

Trial and Appeal Board, affirming the examiner’s rejection 

of all claims of United States Patent Application No. 
2 IN RE: GREENSTEIN

14/088,593 (“the ’593 application”). We affirm the Board’s 

decision.1

DISCUSSION

We review the Board’s legal determinations de novo, 

and the factual findings underlying those determinations 

for support by substantial evidence, In re Gartside, 203 

F.3d 1305, 1316 (Fed. Cir. 2000). A finding is supported by 

substantial evidence if a reasonable mind might accept the 

evidence as adequate to support the finding. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). Patent eligibility under 35 U.S.C. § 101 is a question of law that may 

contain underlying issues of fact. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018).

The ’593 application is directed to a computer-conducted method of “assigning and managing the rights to 

receive taxes when amounts are disbursed from tax-advantaged accounts for which a prior deduction has been received.” ’593 application at 18 (Abstract). The application

explains that tax-deferred savings accounts, such as retirement accounts, allow contributions to the account to be 

made tax-free, with taxes payable on disbursements from 

the account. Id. at 2–3 (Detailed Description). The application describes the invention as a method of “providing for 

transferring the right to receive taxes due [w]hen such 

amounts are withdrawn from tax-deferred [accounts] in exchange for current consideration such as money.” Id. at 3–

4 (Detailed Description).

 

1 Ex Parte Mark A. Greenstein, 2018 WL 3951495 

(P.T.A.B. July 31, 2018) (“Board Op.”), modified on reh’g

(Dec. 20, 2018) (“Reh’g Op.”).
IN RE: GREENSTEIN 3

The following claim states the claimed method, not including proposed amendments after final rejection that 

were not entered:2

1. A method of using one or more computers to 

manage the sale of taxes received by reason of removal of amounts from tax-deferred vehicles, the 

method including a specification of the measure of 

the taxes which are sold;

using one or more computers to track amounts

contributed to and withdrawn from such tax-deferred vehicles;

specifying adjustments to the measure of 

amounts owed to purchasers of taxes sold and owed 

to purchasers of taxes sold based on removal of 

amounts from tax-deferred vehicles;

adjusting the amount owed to purchasers of 

taxes received by reason of removal from tax-deferred vehicles to take account of subsequent withdrawals and contributions to the tax-deferred 

vehicles;

adjusting the amount payable of taxes which 

are sold to take account of subsequent withdrawals 

from and contributions to the tax-deferred vehicles;

 

2 Mr. Greenstein states that he had submitted an 

amendment to the examiner that resolved the rejections 

under sections 101 and 112. The examiner refused to enter 

and consider the amendment, because it was presented after Mr. Greenstein filed his notice of appeal and did not 

comply with 37 C.F.R. §§ 41.33(a) and 1.116. However, the 

Board’s initial decision recited claim 1 as proposed to be 

amended. After Mr. Greenstein requested reconsideration, 

the Board mentioned its error and stated that it was reviewing the original claim, which the Board reproduced in 

the reconsideration decision. The claim 1 shown herein is 

the unamended claim in the reconsideration decision.
4 IN RE: GREENSTEIN

specifying an adjustment to take account of a 

change in tax rates;

adjusting the amount owed to purchasers of 

such taxes to take account of any specified adjustment in tax rates;

using one or more computers to divide the 

rights to receive the adjusted amount payable of 

such taxes sold into qualitatively different interests which provide rates of return based on factors 

which are different from each other;

tracking the ownership of such different interests;

receiving amounts payable of such taxes which 

amounts are adjusted to take account of withdrawals from and contributions to the tax-deferred vehicles;

transferring the amounts due to the owners of 

the qualitatively different interests which provide 

rates of return based on factors which are different 

from each other.

Reh’g Op. at 2–3.

The examiner had rejected the claims on three 

grounds: under § 101 as directed to patent-ineligible subject matter, under § 112(b) as lacking definiteness, and under § 103(a) as obvious in view of cited references. The 

Board affirmed the rejections based on § 101 and § 112(b), 

and “summarily reversed” the rejection on § 103 for the 

reason that “the metes and bounds of the claim protection 

being sought cannot be reasonably ascertained. It would 

be improper, then, to speculate as to the meaning of the 

claims.” Board. Op. at *9.

The Director states that “[a]ssigning rights to future 

tax payments is a fundamental economic practice and 

therefore an abstract idea.” PTO Br. 6.

In Alice Corp. Pty. Ltd. v. CLS Bank International, 573 

U.S. 208 (2014), the Court set forth a two-step analytical 
IN RE: GREENSTEIN 5

guide to Section 101, whereby: “First, we determine 

whether the claims at issue are directed to one of those patent-ineligible concepts” such as abstract ideas, id. at 217, 

and if so, in order to determine whether an inventive step 

is present “we consider the elements of each claim both individually and ‘as an ordered combination’ to determine 

whether the additional elements ‘transform the nature of 

the claim’ into a patent-eligible application.” Id. (quoting 

Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 

U.S. 66, 78–79 (2012)). Precedent has further explained 

the need for an “inventive concept that renders the invention ‘significantly more’ than that ineligible concept.” BSG 

Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. 

Cir. 2018).

Applying these principles, the Board held that the ’593

application claims met the first step and are directed to an 

abstract idea, for “[e]xchanging consideration for a right to 

receive future payments, as well as managing the amounts 

of those future payments, is a fundamental business practice, long prevalent in our system of commerce.” Board Op. 

at *5. The Board found that the claims “do no more than 

require generic computer elements to perform generic computer functions, rather than improve computer capabilities,” id., and that “[a]ppending various combinations of 

conventional computers is not enough to transform the idea 

into a patent-eligible invention,” id.

The Board responded to Mr. Greenstein’s argument 

that the Board “d[id] not consider the specifics of the 

claims.” Reh’g Op. at 4. The Board stated that “the various 

claim limitations related to management of payments, for 

example, track[ing] amounts, specifying adjustments, adjusting amounts, divid[ing] rights, tracking ownership, receiving amounts, transferring amounts, all can be 

performed by a human using pen and paper.” Id. at 5. Mr. 

Greenstein on appeal states that the Board erred, for performance by pen and paper is not feasible.
6 IN RE: GREENSTEIN

Mr. Greenstein states that the Board erroneously analyzed the claims at a generalized abstract level, while ignoring critical detailed limitations such as the claim term 

“adjusting the amount owed to purchasers of taxes received 

by reason of removal from tax-deferred vehicles to take account of subsequent withdrawals and contributions to the 

tax-deferred vehicles.” Reply Br. 5. He states that this use 

of a computer is an inventive concept, for a computer is essential to conduct of the claimed method, as in Bancorp 

Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 

F.3d 1266, 1278 (Fed. Cir. 2012) (“To salvage an otherwise 

patent-ineligible process, a computer must be integral to 

the claimed invention, facilitating the process in a way that 

a person making calculations or computations could not.”).

Mr. Greenstein states that the Board erred in holding 

that these functions can be performed by hand calculation, 

for it would take years to do so. He argues that the claims 

recite using a computer to assign and manage the right to 

receive taxes when amounts are disbursed from tax-advantaged accounts for which a prior deduction has been received, including computerized records of contributions 

and withdrawals, with adjustment to take account of contributions and withdrawals. He states that these steps 

cannot reasonably be performed by pen and paper, for his 

method “require[s] millions of calculations within short periods of time,” Greenstein Br. 3. He states that because it 

is critical to perform these functions quickly and accurately, doing so by computer is the only feasible way of conducting the method. He does not argue novelty of the 

method; he argues that the calculations cannot feasibly be 

performed without use of a computer.

The Director responds that “providing for calculations 

to ‘be performed more efficiently via a computer does not 

materially alter the patent eligibility of the claimed subject 

matter.’” PTO Br. 11 (quoting Bancorp Servs., 687 F.3d at 

1278). The Director observes that “any alleged novelty in 

Greenstein’s claimed tax-monetization system is irrelevant 
IN RE: GREENSTEIN 7

to the question of subject matter eligibility.” PTO Br. 8–9; 

see id. at 9 (“Even assuming [the claimed invention is

novel], it 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 Board correctly applied precedent, and held that 

the complexity of this known method does not impart patentability to computer-implementation of the method. 

The rejection under Section 101 is affirmed; thus on this 

appeal we do not reach the issues raised by the rejections 

under Sections 112 and 103.

AFFIRMED

No costs.