In Re: Greenstein

NOTE: This disposition is nonprecedential.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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2019-1382
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 10/492,205.
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Decided: July 12, 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, PHILIP J. WARRICK.
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Before LOURIE, O’MALLEY, and CHEN, Circuit Judges.
CHEN, Circuit Judge.
Mark Greenstein seeks review of a Patent Trial and
Appeal Board (Board) decision affirming an examiner’s re-
jection of all pending claims of his U.S. Patent Application
No. 10/492,205 (the ’205 Application) under 35 U.S.C.
2 IN RE: GREENSTEIN

§ 101. Because we agree with the Board’s decision, we af-
firm.
BACKGROUND
In 2004, Mr. Greenstein filed the ’205 Application,
which is generally directed to methods for providing recom-
mendations over the Internet for products or services.
SAppx29–30. 1 The specification explains that “the [I]nter-
net provides a very useful mechanism for individual con-
sumers to purchase or lease product[s] or services,” but
that “the source of the information related to such pur-
chase/lease decisions may be biased and/or unreliable.”
’205 Application at p. 2, ll. 20–26. One example of such bias
is that “the ranking/order of the information presented by
a search engine may be influenced by payments made to
the owners of the search engine . . . .” Id. at p. 3, ll. 29–31.
Thus, “[t]he commercial reality of the Internet can add to
the inefficiency and self-interest typical in the selection of
products and/or services today.” Id. at p. 3, ll. 31–33.
The ’205 Application’s claims purport to address the is-
sue of biased recommendations through the use of an inde-
pendent third party. Claim 101 is representative:
101. A method for providing recommendations,
over the internet, regarding a purchase or lease of
goods or services for at least one purchaser or les-
sor comprising the steps of:
receiving a request regarding the purchase or lease
of goods or services;
storing the request in a computerized database;

1 Mr. Greenstein and the Patent Office submitted
their own appendices, which will be referred to with the
prefixes “Appx” and “SAppx,” respectively.
IN RE: GREENSTEIN 3

providing data which is independent of at least one
person who will profit depending on the decision of
the purchaser or lessor;
retrieving from the database information neces-
sary to process the request;
processing the request using software to present a
recommendation, the software in a computer which
accesses the data which is independent of the at
least one person who will profit depending on the
decision of the purchaser or lessor;
insuring, using software in a computer, that the
data used to arrive at the recommendation are orig-
inated by a person who is independent of at least
one person who will profit depending on whether
the at least one purchaser or lessor purchases or
leases the goods or services; and
transmitting via a computer, over the internet, the
recommendation by the at least one person who
will profit depending on the decision concerning the
purchase or lease of goods or services to at least one
purchaser or lessor.
’205 Application at claim 101. The claimed invention ap-
pears to provide unbiased recommendations by providing
independent data, processing it to present a recommenda-
tion, and “insuring” that the data is “originated by a person
who is independent of at least one person who will profit
depending on whether the at least one purchaser or lessor
purchases or leases the goods or services.” Id. According
to the specification, the claimed invention “provid[es] a
data processing system, originated, approved, reviewed
and/or overseen by, or by criteria originated approved, re-
viewed, overseen and/or established by a person who is in-
dependent of the purchasing/leasing transaction(s)…” Id.
at p. 4, ll. 31–35. The independent person “is generally or
totally independent from and unrelated to any other person
4 IN RE: GREENSTEIN

who receives compensation in connection with the subject
transactions. . . .”). Id. at p. 6, ll. 30–33.
The examiner rejected all pending claims under § 101
as being directed to the abstract idea of “providing recom-
mendations for the purchase or lease of goods or services
for a purchaser or lessor,” which the examiner character-
ized as a fundamental economic practice. SAppx775–77.
Under step two of Alice, the examiner found that the claim
elements do not provide any “inventive concept” that trans-
forms the abstract idea into a patent-eligible application;
rather, the claims require no more than the performance of
generic functions that were well-understood, routine, and
conventional. Id.
Mr. Greenstein appealed the examiner’s rejection to
the Board. The Board affirmed the examiner’s rejection in
an initial decision on appeal in May 2018 and a subsequent
rehearing decision in November 2018. Appx1–19. Mr.
Greenstein appeals the Board’s decision. We have jurisdic-
tion pursuant to 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
Patent eligibility under 35 U.S.C. § 101 is a question of
law that may contain underlying issues of fact. Interval
Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1342 (Fed. Cir.
2018) (citing Berkheimer v. HP Inc., 881 F.3d 1360, 1365
(Fed. Cir. 2018)). We review an ultimate conclusion on pa-
tent eligibility de novo. See id.
Section 101 allows inventors to obtain patents on “any
new and useful process, machine, manufacture, or compo-
sition of matter, or any new and useful improvement
thereof.” § 101. However, “this provision contains an im-
portant implicit exception”: an inventor may not patent
laws of nature, natural phenomena, or abstract ideas. Al-
ice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014). To assess whether a patent claim violates this ex-
ception to the terms of § 101, the Supreme Court has set
IN RE: GREENSTEIN 5

forth a two-step framework, in which a court determines:
(1) whether the claim is “directed to a patent-ineligible con-
cept,” i.e., a law of nature, natural phenomenon, or abstract
idea, and, if so, (2) whether the elements of the claim, con-
sidered “both individually and ‘as an ordered combina-
tion,’” add enough to “‘transform the nature of the claim’
into a patent-eligible application.” Id. at 217 (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 78 (2012)).
A. Alice Step One
Reading the claims in light of the specification, the
Board observed that the claims at issue, which are directed
to insuring that recommendations are “originated by a per-
son who is independent of at least one person who will
profit,” “solve[] the business/legal/financial problems of
conflicts of interest arising from facilitating transactions.”
Appx5. The Board thus agreed with the Examiner that the
claims are directed to the abstract idea of “providing rec-
ommendations for the purchase or lease of goods or services
for a purchaser or lessor.” Appx4–5. As the Board ex-
plained, this court has held similar claims on methods of
fundamental economic practices to be directed to abstract
ideas. Appx6 at n.4; see also Buysafe, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) (finding claims on
“creating a contractual relationship—a ‘transaction perfor-
mance guaranty’” to be abstract); Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed.
Cir. 2015) (determining that claims were directed to the
abstract idea of “tracking financial transactions to deter-
mine whether they exceed a pre-set spending limit (i.e.,
budgeting)”).
In Alice, the Supreme Court found that claims for mit-
igating settlement risk in financial transactions using a
third-party intermediary to be directed to the abstract idea
of intermediated settlement. Alice, 573 U.S. at 219. As the
government notes, the claims at issue likewise employ an
6 IN RE: GREENSTEIN

independent third party to mitigate risk in financial trans-
actions—here, the risk that a purchase recommendation is
biased or economically motivated. See, e.g., Appellee’s Br.
at 6–7; ’205 Application at claim 101; SAppx32–34.
Mr. Greenstein argues that the claims solve a problem
allegedly unique to the Internet—that the Internet enables
“anonymously-sourced, conflicted recommendations” that
have no analog in the pre-Internet world. Appellant’s In-
formal Br. at 4, 6, 10. But, as the Board found, the problem
of trustworthy recommendations predates the Internet.
Appx7 (explaining that Appellants’ own specification “de-
scribes various existing methods of providing recommenda-
tions, including Consumer Reports,” which “provide[s]
product reviews without conflicts of interest”); see also ’205
Application at pp. 4, 15.
Even if we assume that the Internet presents a unique
problem of trust as Mr. Greenstein argues, the claims do
not provide any concrete solution. Instead, they provide
functional, results-oriented limitations like others we have
held to be directed to abstract ideas. See Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016)
(“essentially result-focused, functional character of claim
language has been a frequent feature of claims held ineli-
gible under § 101, especially in the area of using generic
computer and network technology to carry out economic
transactions”); Interval Licensing, 896 F.3d at 1345 (find-
ing claim directed to “non-interfering display of two infor-
mation sets, without any limitation on how to produce that
result” to be ineligible). The claimed use of the Internet
and generic computer functionality to receive, manipulate,
and transmit data serves to “limit[] the field of use of the
abstract idea to a particular existing technological environ-
ment,” but it “does not render the claims any less abstract.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1259 (Fed. Cir. 2016).
IN RE: GREENSTEIN 7

B. Alice Step Two
Nor do the claims recite any transformative inventive
concept. It is well-settled that merely placing an abstract
idea in the context of a computer does not create a patent-
eligible application of that idea. See Alice, 573 U.S. at 223–
24. In contrast, we have found that software-based claims
may include an inventive concept where they provide a
technological solution to a technological problem. See, e.g.,
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1348–49 (Fed. Cir. 2016) (claiming an
improved content filter); DDR Holdings, LLC v. Ho-
tels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014)
(claiming a hybrid web page that overrides normal hyper-
link operation). The claims at issue provide no such tech-
nological solution. Mr. Greenstein argues that the claimed
invention replaces conventional solutions that provide rec-
ommendations from a conflicted person. Appellant’s Infor-
mal Br. at 8–9. But transmission of such a message (i.e.,
recommendation) over the Internet does not provide any
improvement on how the Internet transmits messages.
Nor does it interrupt hyperlink functionality as Mr. Green-
stein alleges. Instead, the claims broadly recite results-ori-
ented limitations that invoke the generic use of a computer
to store, process, and transmit information. See Elec.
Power Grp., 830 F.3d at 1356 (finding no inventive concept
in claims which did “not include any requirement for per-
forming the claimed functions of gathering, analyzing and
displaying in real time”); Buysafe, 765 F.3d at 1355 (receiv-
ing request and transmitting offer of guarantee merely ge-
neric computer functionality adding no inventive concept).
Mr. Greenstein argues that the claims provide a solu-
tion to the problem of “anonymously-sourced, conflicted
recommendations” by “insuring” that data used to arrive at
the recommendation is independent of at least one person
who would profit. Appellant’s Informal Br. at 5–6. But the
problem of trustworthy recommendations is a business
problem, not a technical one. As the Board explained,
8 IN RE: GREENSTEIN

Consumer Reports, an organization which was “founded in
1927 to provide product reviews without conflicts of inter-
est,” similarly addressed this problem by refusing to accept
money or compensation from commercial enterprises.
Appx7–8. Moreover, there is no suggestion that the “insur-
ing” step requires anything more than conventional data
processing performed by a generic computer. Instead, the
claims are broadly directed to the abstract idea of providing
recommendations for a purchaser or lessor, without offer-
ing a technical solution as to how one would “insure” that
the data relied upon originates from a person who is inde-
pendent of the transaction. 2
The claims at issue assert a series of generic computer
steps to provide purchasing or leasing recommendations
for goods or services. To the extent they describe the use
of data from an independent source, we have previously ex-
plained that this type of data manipulation is not enough
to save a claim from ineligibility. See, e.g., Elec. Power
Grp., 830 F.3d at 1354–55 (finding claim directed to the ab-
stract idea of “collecting information, analyzing it, and dis-
playing certain results” to be ineligible); Buysafe, 765 F.3d

2 Mr. Greenstein also argues that it would not be
possible to perform this “insuring” step without additional
limitations of “screening and sourcing.” Appellant’s Infor-
mal Br. at 3. But these limitations are not recited in the
claims and Mr. Greenstein offers no support from the spec-
ification in support of his arguments. Even assuming the
inclusion of “screening and sourcing” limitations, there is
nothing to suggest that these are more than merely con-
ventional steps related to the insuring step, performed by
a generic computer, and Mr. Greenstein admits that such
an implementation is within the common understanding of
how a computer would be used to review software data to
“insure” that the data is originated by an independent per-
son. Id.
IN RE: GREENSTEIN 9

at 1356 (generic computer functionality used for “receiving
and transmitting information over a network” held ineligi-
ble); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir.
2014) (finding claims directed to the abstract idea of “rec-
ognizing and storing information from hard copy docu-
ments” to be ineligible); Trading Techs. Int’l, Inc. v. IBG
LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019) (claimed steps
on “routing data gathering, and displaying information”
not eligible, despite “recit[ing] a purportedly new arrange-
ment of generic information that assists traders in pro-
cessing information more quickly”)
We have also explained that results-oriented claiming
such as that which exists in the ’205 Application is not
enough to constitute an inventive concept. See, e.g., Elec.
Power Grp., 830 F.3d at 1354–56 (finding ineligible “claims
so result-focused, so functional, as to effectively cover any
solution to an identified problem”). Thus, we conclude that
the claims of the ’205 Application do not provide any in-
ventive step sufficient to transform the claims into patent-
eligible subject matter.
We have considered Mr. Greenstein’s remaining argu-
ments and find them unpersuasive. For the foregoing rea-
sons, we conclude that the claims are ineligible under § 101
and affirm the decision of the Board.
AFFIRMED
COSTS
No costs.