NOTE: This disposition is nonprecedential.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
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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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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.
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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. Edi-
son Co. v. NLRB,
305 U.S. 197, 229 (1938). Patent eligibil-
ity under 35 U.S.C. § 101 is a question of law that may
contain underlying issues of fact. See SAP Am., Inc. v. In-
vestPic, LLC,
898 F.3d 1161, 1166 (Fed. Cir. 2018).
The ’593 application is directed to a computer-con-
ducted method of “assigning and managing the rights to
receive taxes when amounts are disbursed from tax-advan-
taged accounts for which a prior deduction has been re-
ceived.” ’593 application at 18 (Abstract). The application
explains that tax-deferred savings accounts, such as retire-
ment 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 appli-
cation 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amounts are withdrawn from tax-deferred [accounts] in ex-
change 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 in-
cluding 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 re-
moval 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-de-
ferred 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-de-
ferred vehicles to take account of subsequent with-
drawals 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 af-
ter 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 re-
viewing 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 adjust-
ment 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 inter-
ests which provide rates of return based on factors
which are different from each other;
tracking the ownership of such different inter-
ests;
receiving amounts payable of such taxes which
amounts are adjusted to take account of withdraw-
als from and contributions to the tax-deferred vehi-
cles;
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 sub-
ject matter, under § 112(b) as lacking definiteness, and un-
der § 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 pa-
tent-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 in-
dividually 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 inven-
tion ‘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 prac-
tice, 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 com-
puter functions, rather than improve computer capabili-
ties,”
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, ad-
justing amounts, divid[ing] rights, tracking ownership, re-
ceiving 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 per-
formance by pen and paper is not feasible.
6 IN RE: GREENSTEIN
Mr. Greenstein states that the Board erroneously ana-
lyzed the claims at a generalized abstract level, while ig-
noring 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 ac-
count 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 es-
sential 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-advan-
taged accounts for which a prior deduction has been re-
ceived, including computerized records of contributions
and withdrawals, with adjustment to take account of con-
tributions 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 pe-
riods of time,” Greenstein Br. 3. He states that because it
is critical to perform these functions quickly and accu-
rately, doing so by computer is the only feasible way of con-
ducting 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 pa-
tentability 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.
