N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

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IN RE: MARK ALFRED GREENSTEIN, Appellant

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2019

- 1520

______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 14/088,593.

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Decided: December 10 , 2019

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M ARK A LFRED G REENSTEIN , Bethesda, MD, pro se.

J OSEPH M ATAL , Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for appellee Andrei Iancu. Also represented by T HOMAS W. K RAUSE , A MY J. N ELSON

.

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Before N EWMAN , D YK , and R EYNA , Circuit Judges.

N EWMAN , Circuit Judge

. Mark A. Greenstein appeals the decision of the Patent T rial and Appeal Board

, affirming the examiner’s rejection of all claims of U nited S tates Patent Application No.IN RE : GREENSTEIN 2

14/088,593 (“the ’593 application”)

. W e affirm the Board’s decision

. 1

D ISCUSSION 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. 200 0). 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 tha t 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 prio r deduction has been received.” ’593 application at 18 (Abstract). The application explains that t ax

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

m ade 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the invention as a method of “providing for transferring the right to receive taxes due [w] h en such amounts are withdrawn fro m tax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 o f 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

con tributed 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 o wed 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 e xaminer refused to enterand 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.IN RE : GREENSTEIN 4

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 o r 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 t o patent

- ineligible subject matter

, under § 112(b) as lacking definitenes s , and under § 103(a) as obvious in view of cited references. The Board affirmed the rejec tions 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 impr oper , 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 fund a me ntal economic practice and therefore an abstract idea.” PTO Br. 6.

In Alice Corp. Pty. Ltd. v. CLS Bank Int ernationa l , 573 U.S. 208 (2014) , t he C ourt s et forth a two

- step analyticalIN RE : GREENSTEIN 5

guide to Section 101, whereby: “First, we determinewhether the claims at issue are directed to one of those pate nt

- 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 ea ch claim both individually and ‘as an ordered combination’ to determine whether the additional elemen ts ‘ tr ansform the nature of the claim’ int o a patent

- eligible application

. ” I d. (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 th at ineligible concept.” BSG Tech LLC v. BuySeasons, Inc.

, 899 F.3d 1281, 1290 (Fed. Cir. 2018).
Applying these principles, t he Board held that the ’ 593 application claims met th e 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 amountsof those future payments, is a fundamental business practice, long prevalent in our sys tem of commerce

. ” Board Op. at *5 . The Board found that the claims “do no more thanrequire generic computer elements to perform generic computer functions, rather than improve computer capabilities,” id. , and that “[a]ppending various combinations of

co nventional 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. T he Board stat ed that “the v arious 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 performanc e by pen and paper is not feasible.IN RE : GREENSTEIN 6

Mr. Greenstein s tates that the Board erroneously analyz ed the claims at a generalized abstract level

, while ignor ing critical detailed limitations such as the claim term “a djusting the amount owed to pur chasers of taxes received by reason of removal from tax

- deferred vehi cles to take account of subsequent withdrawals and contributions to the
tax

- deferred vehicles

. ” Reply Br. 5. He states that th is 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 c alculations 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 ma nage the right to receive taxes when amounts are disbursed from tax

- advantaged accounts for which a prior deduction has been received, includ ing computerized records of contributions and withdrawals, with adjustment to take account of contributions and wit hdrawals. He states that these steps

c an not 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 qu ickly 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.3 d at 1278 ). The Director observes that “any alleged novelty in Greenstein’s claimed tax

- monetization system is irrelevantIN RE : GREENSTEIN 7

to the quest ion of subject matter eligibility.” PTO Br. 8

– 9;

see id. at 9 ( “ Even assuming [the claimed inventi o n is novel], it does not avoid the problem of abstractness

. ” ( quoting Affi nity Labs of Tex., LLC v. DIRECTV, LLC , 838 F.3d 1253, 1263 (Fed. Cir. 2016 ) ) )

. The Board correctly applied precedent, and held thatthe 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.