Bhandari, Muthulakshmi et al.

Patent Trials and Appeals Board

Mar 25, 2020

12631092 - (D) (P.T.A.B. Mar. 25, 2020)

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.
12/631,092 12/04/2009 Muthulakshmi Bhandari END920090068US1 1084
26681 7590 03/25/2020
DEPT. IEN
DAUGHERTY & DEL ZOPPO CO., L.P.A.
38500 CHARDON ROAD
WILLOUGHBY HILLS, OH 44094
EXAMINER
FLEISCHER, MARK A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
03/25/2020 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):
adelzoppo@DD-IPLAW.COM
info@DD-IPLAW.COM
pdaugherty@DD-IPLAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MUTHULAKSHMI BHANDARI, ALLISON BAINES BOTROS,
EDWARD H B GIESEN, RAMAN HARISHANKAR,
JAYASHREE JAISHANKAR, AHAMED JALALDEEN,
YING TAT LEUNG, ASHISH MUNGI, SIDDHARTH N. PUROHIT,
PHILIP G. RAINS, and JORGE L. C. SANZ
____________

Appeal 2019-003826
Application 12/631,0921
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
SHEILA F. McSHANE, Administrative Patent Judges.

McSHANE, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant seeks our review under 35
U.S.C. § 134(a) of the Examiner’s final decision to reject claims 1, 5–7, and
9–11. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Br. 2.

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BACKGROUND
The invention relates to enterprise architectures and to creating and
maintaining an industry business architecture model (“IBAM”). Spec. ¶ 2,
Abstract. The model integrates business goals, visions, strategies, and
governance principles with business operations, such as organizational
structure, processes, and data. Id. ¶ 2.
Claims 1 and 7 are independent claims, where claim 1 is
representative and is reproduced below from page 11 of the Claim
Appendix. Appeal Brief, Claim Appendix (Claims App’x), 11–13.
1. A system for creating an industry business architecture
model over a network, comprising:
a client system;
a server operably coupled to said client system via said
network;
a plurality of applications executable via said server;
a data storage device in communication with said server
via said network, the data storage device storing databases
housing information and models resulting from execution of
said plurality of applications, the databases including a
component business model database, a process model database,
a service model database, and an information model database;
an industry business architecture model executing on said
system, said industry business architecture model performing:
building a component map of a plurality of business
activity components;
collecting cost center data from an enterprise;
calculating values for a plurality of key performance
indicators using said cost center data;
creating a component business model by filtering the
component map of business activity components to select a heat
map subset of the plurality of business activity components that
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have a threshold gap between current and desired capabilities as
a function of the calculated values of the plurality of key
performance indicators of activity categories and target
competitive levels of the respective component map business
activity components;
creating a process model, a services model, and an
information model;
creating update linkages between the component business
model, the process model, the services model, and the
information model;
creating a reference architecture and defining knowledge
assets; and
storing said models, said reference architecture, and said
knowledge assets in said data storage device.
In a Final Office Action, the Examiner rejects claims 1, 5–7, and 9–11
under 35 U.S.C. § 101 as directed to unpatentable subject matter. Final
Action, hereafter “Final Act.,” 5–10, mailed June 29, 2018; Answer,
hereafter “Ans.,” 2–8, mailed March 8, 2019.
DISCUSSION
35 U.S.C. § 101
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
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we first determine what concept the claim is “directed to.” See Alice,
573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas include certain methods of
organizing human activity, such as fundamental economic practices (Alice,
573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker
v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v.
Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible
include physical and chemical processes, such as “molding rubber products”
(Diamond v. Diehr, 450 U.S. 175, 191 (1981) (“Diehr”)); “tanning, dyeing,
making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at
182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener,
94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a
mathematical formula, but the Supreme Court held that “[a] claim drawn to
subject matter otherwise statutory does not become nonstatutory simply
because it uses a mathematical formula.” Diehr, 450 U.S. at 176; see also
id. at 191 (“We view respondents’ claims as nothing more than a process for
molding rubber products and not as an attempt to patent a mathematical
formula.”), see also, e.g., id. at 187 (“It is now commonplace that an
application of a law of nature or mathematical formula to a known structure
or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
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elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation and quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].”’ Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The USPTO recently revised guidance on the application of § 101, in
accordance with judicial precedent. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (“2019 Guidance”).
Under the 2019 Guidance, a claim is “directed to” an abstract idea if the
claim recites any of (1) mathematical concepts, (2) certain methods of
organizing human activity, and (3) mental processes—without integrating
such abstract idea into a “practical application,” i.e., without “apply[ing],
rely[ing] on, or us[ing] 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 52–55.
A claim so “directed to” an abstract idea constitutes ineligible subject
matter, unless it recites an additional element (or combination of elements)
amounting to significantly more than the abstract idea. Id. at 56.
With this context in mind, we evaluate the Examiner’s rejection of
representative claim 1. The Examiner finds that claim 1 is directed to “a
system for creating an industry business architecture model over a network”
and creating a “component business model,” “reference architecture,” and
further “defining knowledge assets.” Final Act. 6. With this, the Examiner
finds that the claim is for organizing information into an “industry business
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architecture model” and is therefore drawn to abstract ideas. Id. (citing
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir.
2016); Accenture Global Services, GmbH v. Guidewire Software, 728 F.3d
1336 (Fed. Cir. 2013); Electric Power Group, LLC, v. Alstom, 830 F.3d
1350 (Fed. Cir. 2016), Federal Register, Vol. 79, 74,619–74,633 (Dec. 16,
2014) (2014 Interim Guidance)).
We agree with the Examiner’s findings that representative claim 1 is
directed to creating an industry business architecture, which is a method of
organizing human activity and is an abstract idea. See Accenture Global.,
728 F.3d at 1344–45 (Fed. Cir. 2013) (determining “system claims . . . [that]
only contain generalized software components arranged to implement an
abstract concept [of generating insurance-policy-related tasks based on rules
to be completed upon the occurrence of an event] on a computer” to be
patent-ineligible); Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can.
(U.S.), 687 F.3d 1266, 1270, 1278, 1280 (Fed. Cir. 2012) (method and
system claims for managing a stable value protected life insurance policy by
performing calculations and manipulating the results held patent-ineligible).
The Examiner’s findings also align with the intrinsic record. The
specification states that its invention is directed to creating and maintaining
an industry business architecture model. See Spec. ¶ 5. Because
representative claim 1 recites creating an industry business architecture
model, a method of organizing human activity, we find no error with the
Examiner’s findings.
The next issue under the second prong of step 2A is whether
additional elements in representative claim 1 integrate the judicial exception
into a practical application, such as elements reflecting an improvement in
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the functioning of a computer or an improvement to other technology or
technical field.2
Appellant contends that the use of generic computer components and
software models is not dispositive on the issue of patentability as
demonstrated in Enfish, BASCOM, and McRO. Appeal Br. 4–5 (citing
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); BASCOM
Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016); McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299
(Fed. Cir. 2016) (“McRO”)); Reply Brief, hereafter “Reply Br.,” 2–4, mailed
April 18, 2018. Appellant alleges that the claim provides an improvement to
the technical field of automated enterprise architecture modeling by
including update linkages and filtering the component map of business
activity components to select a heat map subset. Appeal Br. 6–7. Appellant
argues that “[s]imilar to the ‘filtering’ subject matter of BASCOM, the
inventive concept is found in the non-conventional and non-generic
arrangement of components that are otherwise individually well-known and
conventional.” Id. at 7. Appellant further asserts that the claim elements
should be considered in combination and “[a]lthough the various industry
business architecture model can be created or updated at any time, the
linkages tie each model to the others, providing cohesion advantages to the
industry business architecture model relative to the prior art.” Id. at 5–6.
We are not persuaded of error by the Examiner on the issue of
whether the additional elements in representative claim 1 integrate the
judicial exception into a practical application. The Examiner finds, and we
agree, that when considered either individually and as an ordered

2 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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combination, the steps of representative claim 1 do not include
improvements to a technology or technical field, nor do they include
improvements to the functioning of a computer itself. Final Act. 6–7. The
Examiner finds that the depiction of data, including a heat map, provides
information to a user by the display of information, but the use of computer
technology to process information improves the industry business
architecture model, and the model is an abstract idea. Ans. 4. The Examiner
finds that improvements to the model are not technological improvements,
but rather are only improvements to the model—“hence, an abstract idea.”
Id. at 4–5.
In contrast to representative claim 1, Enfish, McRO, and BASCOM are
all directed to improvements in technology. More specifically, in Enfish the
claims were deemed to be patent eligible because they were directed to
improvements in the way computers and networks carry out their basic
functions. See Enfish, 822 F.3d at 1335–36 (“[T]he first step in the Alice
inquiry . . . asks whether the focus of the claims is on the specific asserted
improvement in computer capabilities . . . or, instead, on a process that
qualifies as an ‘abstract idea’ for which computers are invoked merely as a
tool.”). In McRO, the claims “focused on a specific asserted improvement in
computer animation.” McRO, 837 F.3d at 1314. In BASCOM, the Federal
Circuit agreed that the evidence presented for the claims at issue in that case
supported that an ordered combination of the claim elements provided a
specific way to filter content on the Internet to overcome existing technology
problems with other Internet-filtering systems and improved the filtering
performance of the computer system itself, which represented significantly
more than each of the conventional elements. BASCOM, 827 F.3d at 1351.
As the Examiner notes, BASCOM was directed to filtering that represented a
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technological innovation, whereas the claims here are not a technological
improvement but are merely directed to “filtering” to process and display
information in the form of a heat map where “the selection and manipulation
of information . . . by itself does not transform the otherwise-abstract
processes of information and analysis.” Ans. 5–6 (quoting Electric Power,
830 F.3d at 1353, 1355). Here, we agree with the Examiner that
representative claim 1 is “not directed to an improvement in the way
computers operate,” or to another technological improvement, and “the
focus of the claims is not on . . . an improvement in computers as tools, but
on certain independently abstract ideas that use computers as tools.” See
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016).
Appellant additionally argues that when the claim limitations are
considered as a whole that they include specific limitations that are other
than what is well-understood, routine, conventional activity in the field,
and/or add unconventional steps, so as to confine the claimed inventions to
particular useful applications that pose little to no risk of preemption of an
abstract idea in and of itself. Appeal Br. 8. We do not find this argument
persuasive because “[w]hile preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1362-63 (Fed. Cir. 2015) (“that the claims do not preempt all
price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract”).
As a result, we conclude that representative claim 1 does not recite
additional elements that integrate the judicial exception into a practical
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application, and we find no reversible error with the Examiner’s findings
that representative claim 1 recites an abstract idea.
Turning to the second step of the Alice inquiry, we now look to
whether representative claim 1 contains any inventive concept or adds
anything significantly more to transform the abstract concept into a patent-
eligible application. Alice, 573 U.S. at 216.
In addition to the additional claim elements (filtering, heat maps,
linkages) that Appellant argues amount to significantly more than the
judicial exception, as discussed above, Appellant additionally asserts that the
Examiner fails to establish that the specific claimed combination represent
well-understood, routine, and conventional activities. Appeal Br. 9–10;
Reply Br. 4.
The Federal Circuit has held that, after determining that the claim is
directed to an ineligible concept, we assess “whether the claim limitations,
other than the invention’s use of the ineligible concept to which it was
directed, were well-understood, routine, and conventional.” BSG Tech LLC
v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (emphasis added).
Beyond the abstract idea of organizing information into an “industry
business architecture model,” the Examiner finds that the model and the
additional selection and manipulation of information limitations of the claim
are performed by a generic computer performing generic computer functions
that are well-known, routine and conventional practices. Final Act. 9 (citing
Spec. ¶ 5). As discussed above, we agree that the additional selection,
manipulation, and display of information are improvements to the model,
and fall within abstract ideas and, thus, the limitations do not add
significantly more to transform the abstract concept into a patent-eligible
application. Further, Appellant does not assert that there is any
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unconventional use of a computer, and the use of generic computer
components performing generic steps to implement an abstract idea has
repeatedly been found to not make an abstract idea patent eligible. See
Alice, 573 U.S. at 217–218 (Instructing one to “apply” an abstract idea and
reciting no more than generic computer elements performing generic
computer tasks does not make an abstract idea patent eligible.). Although
Appellant argues that the Examiner fails to provide sufficient findings that
additional limitations are well-understood, routine and conventional
activities under Berkheimer, we disagree. See Appeal Br. 4–5, 8–10; Reply
Br. 4; Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
(“Berkheimer”). The Examiner’s findings rely on established law, and under
that law, conventional use of a generic computer using generic steps to
implement abstract ideas does not make the abstract ideas patent eligible.
See Final Act. 7–8; Ans. 4–7; BSG, 899 F.3d at 1290–91; SAP America, Inc.
v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (“In accordance
with the Supreme Court’s conclusion in Alice, . . . this court has ruled many
times that ‘such invocations of computers and networks that are not even
arguably inventive are insufficient to pass the test of an inventive concept in
the application of an abstract idea.”’) (quoting Electric Power, 830 F.3d at
1353, 1355; citing Credit Acceptance Corp. v. Westlake Servs., 859 F.3d
1044, 1055–56 (Fed. Cir. 2017); Smart Sys. Innovations, LLC v. Chicago
Transit Auth., 873 F.3d 1364, 1374-75 (Fed. Cir. 2017); Secured Mail
Solutions LLC v. Universal Wilde, Inc., 873 F.3d 905, 909 (Fed. Cir. 2017)).
The Federal Circuit, in accordance with Alice, has “repeatedly recognized
the absence of a genuine dispute as to eligibility” where claims have been
defended as involving an inventive concept based “merely on the idea of
using existing computers or the Internet to carry out conventional processes,
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with no alteration of computer functionality.” Berkheimer, 890 F.3d at
1373; see also, Alice, 573 U.S. at 225 (the “use of a computer to obtain data,
adjust account balances, and issue automated instructions; all of these
computer functions are ‘well-understood, routine, conventional activit[ies]’
previously known to the industry”) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 71–73 (2012)).
Accordingly, we are not persuaded of error in the Examiner’s
conclusion that representative claim 1 is directed to patent-ineligible subject
matter.
CONCLUSION
For the above reasons, the Examiner’s 35 U.S.C § 101 rejection of
claims 1, 5–7, and 9–11 is affirmed.
DECISION SUMMARY
In summary:
Claims Rejected 35 U.S.C.
§
Affirmed Reversed
1, 5–7, 9–11 101 1, 5–7, 9–11

TIME PERIOD FOR RESPONSE
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