Ex Parte GARG et al

Patent Trial and Appeal BoardAug 27, 2018

13410941 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/410,941 03/02/2012 37945 7590 08/29/2018 DUKEW. YEE YEE AND AS SOCIA TES, P.C. P.O. BOX 802333 DALLAS, TX 75380 FIRST NAMED INVENTOR ANKITGARG 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 ATTORNEY DOCKET NO. CONFIRMATION NO. IN9201 l 0088US2 4174 EXAMINER QAYYUM, ZESHAN ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 08/29/2018 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): ptonotifs@yeeiplaw.com mgamez@yeeiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANKIT GARG, TAP AN K. NAY AK, ARITRA SEN, and AKSHAT VERMA Appeal2017-004241 Application 13/410,941 1 Technology Center 3600 Before JOHN A. JEFFERY, ERIC S. FRAHM, and JOHNNY A. KUMAR, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's final rejection of claims 1-10 and 19-26. Claims 11-18 have been canceled (Final Act. 2; App. Br. 51). We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse the Examiner's (i) provisional statutory double patenting rejection of claims 1, 19, and 23; (ii) enablement rejection of claim 5; and 1 As noted by Appellants in the Appeal Brief (App. Br. 3), the real party in interest is International Business Machines Corporation. This Application is related to U.S. Patent Application Serial No. 13/165,989, filed June 22, 2011, which is also before the Board as Appeal No. 2018-008639. Appeal2017-004241 Application 13/410,941 (iii) obviousness rejections of claims 1-10 and 19-26. And, we affirm the Examiner's rejection of claims 1-10 and 19-26 under 35 U.S.C. Â§ 101 as being directed to patent-ineligible subject matter. Therefore, because we sustain at least one ground of rejection with respect to each claim on appeal, the Examiner's decision rejecting claims 1-10 and 19-26 is affirmed. See 37 C.F.R. Â§ 4I.50(a)(l). We affirm. Disclosed Invention and Illustrative Claim The disclosed invention relates a method for server consolidation for the efficient use of computer server resources to reduce the total number of servers an organization requires. Spec. ,r 3. The disclosed and claimed method perform consolidation and planning based on (i) licensing data including licensing costs, and (ii) application workload requirements for applications running computing resources of a set of servers. Id. ,r,r 6, 7; Claims 1, 19, 23; Abstract. An optimal configuration of the applications executing on the servers is recommended based on the lowest calculated total cost. Id. ,r,r 6, 7; Claims 1, 19, 23. Claims 1 and 5, reproduced below with emphases added, are illustrative of the claimed subject matter: 1. A method comprising: storing information on at least one storage medium, wherein said information is for a set of applications running on a set of servers, said information comprising: (i) licensing data for the set of applications that includes licensing costs per application, (ii) application workload requirements for the set of applications running on the set of servers, and (iii) records of computing resources of each of the set of servers, wherein the application workload requirements of 2 Appeal2017-004241 Application 13/410,941 the set of applications are mapped to computing resources of the set of servers; determining dependencies for the set of applications running on the set of servers; generating a plurality of configurations for the set of applications running on the set of servers, wherein said plurality of configurations comprises a first configuration and a second configuration, wherein different arrangements of the set of applications are placed within different ones of the set of servers in the first configuration and in the second configuration, wherein each of the plurality of configurations: (i) assures that the set of applications are placed within specific ones of the set of servers, and (ii) assures that computing resources of each of the set of servers upon which the set of applications are placed satisfies application workload requirements of a server-subset of the set of applications that are placed within that server; calculating licensing costs. for the first configuration and for the second configuration, considering application licensing costs. middleware licensing costs. operating system operating costs for operating systems needed by the set of applications per the dependencies, and database licensing costs ,for databases needed by the set of applications per the dependencies and the workload requirements. calculating operational costs for the first configuration and for the second configuration; calculating total costs for the first configuration and for the second configuration, where the licensing costs and the operating costs are summed when calculating the total costs; recommending one of the first configuration and the second configuration depending on which configuration has a lower total cost in accordance with the calculations; and providing results of the recommending to an authorized administrator as part of a programmatic action for consolidating the set of applications running on the set of servers. 5. The method of claim 1, suggesting a subset of the set of applications that are to be swapped from running on one of the set of servers to another of the set of servers based a 3 Appeal2017-004241 Application 13/410,941 lower total cost computation resulting from swapping the subset of applications from one of the set of servers to another of the set of servers, wherein the suggesting optimizes a tradeoff between the licensing costs and cost savings resulting from complementary workload patterns. REJECTIONS The Examiner made the following rejections, which are before us on appeal: (1) Claims 1, 19, and 23 stand provisionally rejected for statutory double patenting under 35 U.S.C Â§ 101, over claim 19 of U.S. Patent Application No. 13/165,989. Final Act. 3; Ans. 2. (2) Claims 1-10 and 19-26 stand rejected under 35 U.S.C Â§ 101 as being directed to non-statutory subject matter. Id. at 3---6; Ans. 3-5. (3) Claim 5 stands rejected under 35 U.S.C. Â§ 112(a) for failing to comply with the enablement requirement based on the Examiner's determination that it is not clear how the "suggesting ... " step (see claim 5 reprinted supra) is implemented. Id. at 6-9; Ans. 6-8. (4) Claims 1--4, 6, 9, 10, and 19-26 stand rejected under 35 U.S.C Â§ I03(a) as being unpatentable over Baskaran (US 2010/0005173 Al; published Jan. 7, 2010) and Snyder (US 2007/0094375 Al; published Apr. 26, 2007). Final Act. 9-16; Ans. 8-16. (5) Claims 5, 7, and 8 stand rejected under 35 U.S.C Â§ I03(a) as being unpatentable over Baskaran, Snyder, and Barber (US 8,245,140 B2; issued Aug. 14, 2012). Id. at 16-19; Ans. 16-18. 4 Appeal2017-004241 Application 13/410,941 ANALYSIS The Provisional Statutory Double Patenting Rejection Statutory double patenting, stems from Â§ 101 and prohibits a later patent from covering the same invention, i.e., identical subject matter, as an earlier patent. The Court of Customs and Patent Appeals ("CCP A"), predecessor to the United States Court of Appeals for the Federal Circuit, restated the law of double patenting in an early case, Vogel: The first question in the analysis is: Is the same invention being claimed twice? 35 U.S.C. Â§ 101 prevents two patents from issuing on the same invention. . . . By "same invention" we mean identical subject matter .... A good test, and probably the only objective test, for "same invention," is whether one of the claims could be literally infringed without literally infringing the other. If it could be, the claims do not define identically the same invention. In re Vogel, 422 F.2d 438,441 (CCPA 1970). And, a later patent claim "is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim." Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 968 (Fed. Cir. 2001) (citations omitted). Therefore, claims 1, 19, and 23 of the instant application on appeal must each individually cover the same invention (i.e., identical subject matter) as claim 19 of U.S. Patent Application No. 13/410,941 in order to support a case for rejecting claims 1, 19, and 23 for statutory double patenting under 35 U.S.C. Â§ l O 1. We agree with Appellants (App. Br. 11-13) that claims 1, 19, and 23 in the instant case on appeal are method claims and, therefore, different than claim 19 of U.S. Patent Application No. 13/410,941, which is a computer program product claim. We also agree with Appellants that there are other 5 Appeal2017-004241 Application 13/410,941 differences between claims 1, 19, and 23 and claim 19 of U.S. Patent Application No. 13/410,941 which prevent a statutory double patenting rejection from being asserted. In short, none of claims 1, 19, and 23 on appeal contain identical subject matter and cover the same invention as recited in claim 19 ofU.S. Patent Application No. 13/410,941. As a result, we agree with Appellants that the provisional statutory double patenting rejection of claims 1, 19, and 23 is in error. Therefore, we do not sustain the Examiner's provisional double patenting rejection of claims 1, 19, and 23 over claim 19 U.S. Patent Application 13/410,941. The Non-Statutory Subject Matter Rejection under 35 USCÂ§ 101 Under 35 U.S.C. Â§ 101, an invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. The Supreme Court, however, has long interpretedÂ§ 101 to include an implicit exception: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice Corp., 134 S. Ct. at 2355. The first step in that analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts" (id.), e.g., to an abstract idea. For example, abstract ideas include, but are not limited to, fundamental economic practices, methods of organizing human 6 Appeal2017-004241 Application 13/410,941 activities, an idea of itself, and mathematical formulas or relationships. Id. at 2355-57. If the claims are not directed to a patent-ineligible concept, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered "individually and 'as an ordered combination"' to determine whether there are additional elements that "'transform the nature of the claim' into a patent-eligible application." Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 77-79). For claims to pass muster, "at step two, an inventive concept must be evident in the claims." RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017). The Court acknowledged in Mayo, that "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 70-71. We, therefore, look to whether the claims focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. We have reviewed the Examiner's rejection in light of Appellants' arguments in the Appeal Brief. For the reasons that follow, as well as the reasons provided by the Examiner in the Final Rejection (Final Act. 3-6), and the Examiner's Answer (Ans. 3-5, 19-28), we are not persuaded by Appellants' arguments (App. Br. 13-20; Reply Br. 2-7) that the Examiner erred in rejecting claims 1-10 and 19-26 under 35 U.S.C. Â§ 101. We do not find Appellants' arguments for the patent-eligibility of claims 1-10 and 19- 26 persuasive. Instead, we find the Examiner has provided adequate findings and reasoning to support a conclusion of patent-ineligibility, as well as a comprehensive response to Appellants' arguments supported by a 7 Appeal2017-004241 Application 13/410,941 preponderance of evidence. Ans. 19--28. As such, we adopt the Examiner's findings and explanations provided therein. Id.; Final Act. 3---6; Ans. 3-5, 19--28. Step One of Alice Regarding step one of Alice, Enfzsh held that the "directed to" inquiry asks not whether "the claims involve a patent-ineligible concept," but instead whether, "considered in light of the specification, ... 'their character as a whole is directed to excluded subject matter."' Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Regarding improvements to computer-related technology, the Court in Enfzsh held as follows: We do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two. Indeed, some improvements in computer-related technology when appropriately claimed are undoubtedly not abstract, such as a chip architecture, an LED display, and the like. Nor do we think that claims directed to software, as opposed to hardware, are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis. Software can make non- abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer- related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs. Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis. Enfish, 822 F.3d at 1335. Thus, we determine whether the claims "focus on a specific means or method that improves the relevant technology" or are "directed to a result or effect that itself is the abstract idea and merely invoke 8 Appeal2017-004241 Application 13/410,941 generic processes and machinery." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). The Federal Circuit has explained that, in determining whether claims are patent-eligible under Section 101, "the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen-what prior cases were about, and which way they were decided." Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016). The Federal Circuit also noted in that decision that "examiners are to continue to determine if the claim recites (i.e., sets forth or describes) a concept that is similar to concepts previously found abstract by the courts." Id. at 1294 n.2. Here, in rejecting the claims under 35 U.S.C. Â§ 101, the Examiner finds, and we agree, that claims 1--4, 7-9, 11-14, and 16-24 are directed to calculating a cost for different configurations and recommending configurations based on the lowest cost, which is a fundamental economic practice and a method of organizing human activity, therefore, an abstract idea. Final Act. 4--5; Ans. 4, 21. We agree with the Examiner's comparison of the claims in the instant case on appeal with the claims found ineligible in Alice ( electronic methods and computer programs for financial-trading systems on which trades between two parties who are to exchange payment are settled by a third party) and Federal Home Loan Mortg. Corp., AKA Freddie Mac v. GrafflRoss Holdings, LLP, 604 F. App'x 930 (Mem) (Fed. Cir. 2015) (hereinafter "Freddie Mac") (method of conducting electronic bond auctions), which were directed to financial analyses. The instant claims on appeal are also directed to the performance of a financial analysis, albeit to 9 Appeal2017-004241 Application 13/410,941 recommend a configuration having the lowest total cost, which is a combination of a fundamental economic practice and a method of organizing human activity. Appellants' argument (Reply Br. 3--4) that the claims in Alice are not parallel in concept to those on appeal because they relate to intermediate settlement, and not licensing costs, misses the point. The claims in both Alice and the instant case on appeal are drawn to fundamental economic practices. And, Appellants' argument (id. at 5) that the Freddie Mac case is not precedential and, therefore, cannot serve as evidence of the presence of a fundamental economic practice which is patent-ineligible, is also unpersuasive. Freddie Mac also dealt with a fundamental economic practice, and still carries weight as evidence supporting the Examiner's findings, even if not as persuasive as a precedential decision may be. Appellants' arguments (Reply Br. 2-5) that the Examiner has failed to provide evidence of a precedential judicial proceeding establishing a parallel concept being held abstract are not persuasive. First, a parallel concept exists, namely financial analysis as discussed above. Secondly, at least the following decisions from our reviewing court have found many types of fundamental commercial practices patent ineligible: OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 701 (Mem) (2015) (offer-based price optimization); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (transaction guaranty); Personalized Media Commc 'ns, L.L.C. v. Amazon.com Inc., 671 F. App'x. 777 (Mem) (Fed. Cir. 2016) (receiving instructions for ordering); Macropoint, LLC v. Fourkites, Inc., 671 F. App'x 780 (mem) (Fed. Cir. 2016) (tracking freight); Wireless Media Innovations, LLC v. Maher Terminals, LLC, 636 F. App'x 1014 (Mem) (Fed. Cir. 2016) (monitoring 10 Appeal2017-004241 Application 13/410,941 shipping containers); America's Collectibles Network, Inc. v. Jewelry Channel, Inc. USA, 672 F. App'x 997 (Mem) (Fed. Cir. 2017) (conducting reverse auction by adjusting price and inventory); and Easy Web Innovations, LLC v. Twitter, Inc., 689 Fed. App'x 969 (Fed. Cir. 2017) (receiving, authenticating, and publishing data). The Supreme Court additionally guides that contractual relations constitute "a fundamental economic practice long prevalent in our system of commerce." Bilski v. Kappas, 561 U.S. 593, 611 (2010); see also Alice, 134 S. Ct. at 2356, 2357, as cited in buySAFE, 765 F.3d at 1354. Applying this guidance here, we observe independent claims 1, 19, and 23 are directed to calculating costs for different configurations and selecting the configuration with the lowest total cost, taking into consideration licensing costs (i.e., a contractual relation). Further, merely combining several abstract ideas (such a method of organizing human activity in the field of servers and computing devices and a fundamental business practice) does not render the combination any less abstract. RecogniCorp, 855 F.3d at 1327 ("Adding one abstract idea ... to another abstract idea ... does not render the claim non-abstract."); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016) ( determining the pending claims were directed to a combination of abstract ideas). In this light, the recommendation of a configuration having the lowest total cost based on cost calculations and comparisons recited in the claims on appeal is "a fundamental economic practice long prevalent in our system of commerce" (Bilski, 561 U.S. at 611 ), combined with a method of organizing human activity (e.g., determining dependencies, generating 11 Appeal2017-004241 Application 13/410,941 configurations, recommending a configuration, and providing results). Thus, claims 1, 19, and 23 are each drawn to a combination of abstract ideas. Appellants' argument (App. Br. 17-18) that no reference anticipates the claims on appeal and, therefore, the claims are patent eligible, is unpersuasive because "[t]he 'novelty' of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the Â§ 101 categories of possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-89 (1981). Because we determine the claims are directed to a combination of abstract ideas, we proceed to step two of the Alice analysis. Step Two of Alice Regarding step two of Alice, Appellants argue that the independent claims recite "significantly more" than any alleged abstract idea( s) because they improve an existing technological process, and "provide a unique improvement in system configuration that mitigates operational costs for a particular system arrangement." Reply Br. 6. We are not persuaded by Appellants' arguments. Although the claims recite multiple cost calculations for different configurations of computing resources of a servers running applications (i.e., computer operations), they do not go beyond conventional computer operations or cost calculations. In other words, we are not persuaded that the operations in the claims are an improvement to any technology as opposed to an improvement to a fundamental economic practice and/or method of organizing human activity. Considering the claims elements individually and as an ordered combination, the claims do no more than simply instruct the practitioner to 12 Appeal2017-004241 Application 13/410,941 implement the abstract idea on a generic computer or processer. Alice, 134 S. Ct. at 2359; Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012) ("Simply adding a 'computer aided' limitation to a claim covering an abstract concept, without more, is insufficient to render [a] claim patent eligible."). We agree with the Examiner that the claims do not include limitations that are "significantly more" than the abstract idea because the claims do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment (e.g., a set of servers using computing resources to run applications stored on a storage medium). Final Act. 5---6; Ans. 4--5, 21-28. We also agree with the Examiner that claims 1, 19, and 23 do not clearly recite any computer/machine to perform the method steps (Ans. 21, 23, 26), and that the nominal recitations of servers and computing resources in claims 1, 19, and 23 are directed to generic computer components having generic computer functionalities which are well- understood, routine, and conventional, as is supported by Appellants' description of servers at paragraph 16 of the Specification (id. at 21-26). Preemption Lastly, we are not persuaded by Appellants' conclusory arguments that the claims do not preempt others from the whole field identified by the Examiner of financial analysis, e.g., based on software costs. App. Br. 16. Preemption is not a separate test, but is inherently addressed within the Alice framework. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("While preemption may signal patent ineligible 13 Appeal2017-004241 Application 13/410,941 subject matter, the absence of complete preemption does not demonstrate patent eligibility."); Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013) ("[T]he Supreme Court has stated that, even if a claim does not wholly pre-empt an abstract idea, it still will not be limited meaningfully if it contains only insignificant or token pre- or post-solution activity-such as identifying a relevant audience, a category of use, field of use, or technological environment.") (Citations omitted), vacated and remanded, WildTangent, Inc. v. Ultramercial, LLC, 134 S. Ct. 2870 (Mem) (2014) (remanding for consideration in light of Alice, 134 S. Ct. 2347). Therefore, we are not persuaded by Appellants' argument regarding the absence of complete preemption. App. Br. 16. Summary Accordingly, we sustain the Examiner's rejection under 35 U.S.C. Â§ 101 of independent claims 1, 19, and 23, as well as dependent claims 2- 10, 20-22, and 24--26 not argued separately, except based on their dependence on each respective independent claim. The Enablement Rejection We agree with Appellants' conclusions that the Examiner erred in rejecting claim 5 under 35 U.S.C. Â§ 112(a), as failing to provide an enabling disclosure of how to make and/or use the invention recited in claim 5. Our reasoning follows. "[T]o be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without 'undue experimentation."' In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993) (citations omitted); see also In re Vaeck, 947 F.2d 488, 496 (Fed. Cir. 1991) ( the Specification must teach those of ordinary skill "how to 14 Appeal2017-004241 Application 13/410,941 make and how to use the invention as broadly as it is claimed"). Factors to consider include "(1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, ( 6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims." In re Wands, 858 F .2d 731, 737 (Fed. Cir. 1988). Enablement, like obviousness, is a question of law based upon underlying facts. Id. at 735. Regarding the burdens of demonstrating or refuting non-enablement, the Federal Circuit has instructed: When rejecting a claim under the enablement requirement of section 112, the PTO bears an initial burden of setting forth a reasonable explanation as to why it believes that the scope of protection provided by that claim is not adequately enabled by the description of the invention provided in the specification of the application; this includes, of course, providing sufficient reasons for doubting any assertions in the specification as to the scope of enablement. If the PTO meets this burden, the burden then shifts to the applicant to provide suitable proofs indicating that the specification is indeed enabling. Wright, 999 F.2d at 1561-62. The remaining question is whether: suggesting a subset of the set of applications that are to be swapped from running on one of the set of servers to another of the set of servers based a lower total cost computation resulting from swapping the subset of applications from one of the set of servers to another of the set of servers, wherein the uggesting optimizes a tradeoff between the licensing costs and cost savings resulting from complementary workload patterns 15 Appeal2017-004241 Application 13/410,941 (claim 5), requires undue experimentation. For the reasons that follow, we hold that it does not. The Examiner determines that although the several steps of claim 5 are enabled individually, the Specification fails to enable one of ordinary skill in the art to make and/or use the combination of steps recited in claim 5. Final Act 7-8. In other words, the Examiner admits that the individual steps recited in claim 5 are all disclosed in Appellants' Specification. See Final Act. 7-8 ("the instant specification appears to disclose the claimed element(s) individually"). However, the Examiner determines, and Appellants dispute, the first Wands factor, namely that of undue experimentation. The Examiner determines that the quantity of experimentation needed to make or use the invention of claim 5, based on Appellants' disclosure, is high. Final Act. 8; Ans. 8. Undue experimentation is a matter of degree. Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1253 (Fed. Cir. 2004) (internal quotation omitted). Even "a considerable amount of experimentation is permissible," as long as it is "merely routine" or the Specification "provides a reasonable amount of guidance" regarding the direction of experimentation. Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1360-61 (Fed. Cir. 1998) (internal quotation omitted). Yet, routine experimentation is "not without bounds." Cephalon, Inc. v. Watson Pharms., Inc., 707 F.3d 1330, 1339 (Fed. Cir. 2013). We agree with Appellants (see App. Br. 22-23) that because paragraphs 3, 31, and 45 of the Specification disclose (i) workload varies from server to server; and (ii) various applications 114 are disclosed as having complementary workloads that may be more efficiently executed on 16 Appeal2017-004241 Application 13/410,941 a common server 126, virtual machine 118, node 121, and/or cluster 122, the originally filed Specification reasonably conveys to one of ordinary skill in the art how to make and/or use the disputed limitation recited in claim 5, namely suggesting a subset of the set of applications to be swapped to lower total costs by optimizing a tradeoff between licensing costs and cost savings resulting from complementary workload patterns. In addition, Appellants' Figure 2A shows a swap candidate 240 which is described as "represent[ing] a suggested application arrangement that reduces overall cost 241 ( compared to a different planned configuration and/or compared to an existing arrangement)" (Spec. ,r 35). Paragraphs 35 through 3 8 also describe the benefits of swapping candidates based on licensing and other costs (see id. ,r,r 35-38). For example, "[t]he workloads can complement still, after the swap 240 occurs" (id. ,r 37). As a result, we agree with Appellants' arguments (App. Br. 20-24) that the Examiner's determination that the amount of experimentation needed to make and/or use the invention recited in claim 5 and, therefore, claim 5 is not enabled, is in error. In view of the foregoing, the enablement issue before us distills down to whether the Examiner established an evidentiary basis to support a conclusion that Appellants' Specification fails to enable the full scope of Appellants' invention recited in claim 5. See In re Marzocchi, 439 F.2d 220, 224 ( CCP A 1971 ). On this record, we find that the evidence relied upon by Examiner fails to support the Examiner's conclusion. At best, the Examiner established that some experimentation would be required to practice the full scope of Appellants' claimed invention. The Examiner, however, failed to establish that this experimentation would have been considered undue by 17 Appeal2017-004241 Application 13/410,941 those of skill in this field at the time of Appellants' claimed invention. See Palko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1365 (Fed. Cir. 2006) ("[T]he mere fact that the experimentation may have been difficult and time consuming does not mandate a conclusion that such experimentation would have been considered to be 'undue' in this art. Indeed, great expenditures of time and effort were ordinary in the field of vaccine preparation."). Based on the record before us, Appellants' Specification reasonably conveys to one of ordinary skill in the art at the time of Appellants' invention the ability to understand, make, and/ or use the "suggesting ... " step recited in claim 5. Accordingly, we do not sustain the Examiner's enablement rejection of claim 5. Obviousness Rejections At the outset, we agree with Appellants (App. Br. 24--32) that a proper interpretation of independent claims 1, 19, and 23 requires the "calculating licensing costs ... " limitation be given patentable weight. The Examiner gives no patentable weight to the subject matter underlined in claim 1 reprinted supra, including the "calculating licensing costs ... " limitation. See App. Br. 10-11, 29--30. Non-functional descriptive material, such as instructions or other printed material that is not interrelated with the underlying product, is generally not entitled to patentable weight. See, e.g., In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) (anticipation rejection affirmed where claimed instructions merely taught a new use for an existing product). The non- functional descriptive material must be considered, but when it does not functionally relate to the substrate, the non-functional descriptive material 18 Appeal2017-004241 Application 13/410,941 "will not distinguish the invention from the prior art in terms of patentability." In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (citing In re Miller, 418 F.2d 1392 (CCPA 1969)). Non-functional descriptive material does not have to be printed material, but can be data in other forms, such as broadcast or data that does not reconfigure a computer or how process steps are to be performed. Ex parte Mathias, 84 USPQ2d 1276, 1279 (BP AI 2005) (informative), aff'd, 191 F. App'x 959 (Rule 36) (Fed. Cir. 2006). "[N]onfunctional descriptive material cannot lend patentability to an invention that would have otherwise been anticipated by the prior art." Mathias, 84 USPQ2d at 1279. However, non-functional descriptive material may not include claim recitations directed to more than mere information content in memory. See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994). Functional descriptive material may include recitations that "define functional characteristics of [a] memory" by requiring "specific electronic structural elements which impart a physical organization on the information stored in memory" and which "dictate how application programs manage information," effecting an outcome such as "provid[ing] increased computing efficiency." Id. We agree with Appellant's conclusions with regard to the obviousness rejections of claims 1-10 and 19-26 over the base combination of Baskaran and Snyder. Because the Examiner reads out substantial portions of the claim in making the base rejection of claims 1, 19, and 23 (see, e.g., the underlined portions of claim 1 reprinted supra, which were not given any patentable weight by the Examiner in making the obviousness determinations), we agree with Appellants' contentions (App. Br. 24--47) that no prima facie case of obviousness has been established, and thus, the 19 Appeal2017-004241 Application 13/410,941 obviousness rejections of claims 1-10 and 19-26 are in error. For example, in rejecting claims 1 and 5 for obviousness, the Examiner gives no patentable weight to the subject matter underlined in claims 1 and 5 reprinted supra. See App. Br. 10-11, 29-30 (as to claim 1); App. Br. 32, 34--35 (as to claim 5). We conclude that the Examiner's use of the claim interpretation principles of intended use, wherein clauses, and non- functional descriptive material to read out the majority of the claim limitations is outweighed by the requirement to consider the claim as a whole in light of Appellants' Specification. Therefore, the Examiner has not shown that the combination of Baskaran and Snyder teaches or suggest at least the following disputed limitation recited in claim 1, and the commensurate limitations in remaining independent claims 1, 19, and 23: calculating licensing costs, ... , considering application licensing costs, middleware licensing costs, operating system operating costs for operating systems needed by the set of applications per the dependencies, and database licensing costs for databases needed by the set of applications per the dependencies and the workload requirements. Claim 1. Based on the foregoing, we concur with Appellants (see App. Br. 24-- 46) that the Examiner has not properly established factual determinations and articulated reasoning with a rational underpinning to support the legal conclusion of obviousness for independent claims 1, 19, and 23, or their corresponding dependent claims, resulting in a failure to establish a prima facie of obviousness. 20 Appeal2017-004241 Application 13/410,941 Accordingly, we do not sustain the Examiner's obviousness rejections of independent claims 1, 19, and 23, as well as claims 2-10, 20-22, and 24-- 26 depending respectively therefrom, all rejected over the same base combination of Baskaran and Snyder. CONCLUSIONS (1) The Examiner erred in provisionally rejecting claims 1, 19, and 23 for statutory double patenting under 35 U.S.C Â§ 101, over claim 19 of U.S. Patent Application No. 13/165,989. (2) Under 35 U.S.C. Â§ 101, the Examiner did not err in rejecting claims 1-10 and 19-26 as being directed to patent-ineligible subject matter. (3) The Examiner erred in rejecting claim 5 as being unpatentable under 35 U.S.C. Â§ 112(a) for a lack of an enabling disclosure of how to make and/ or use the invention. (4) The Examiner erred in rejecting (i) claims 1--4, 6, 9, 10, and 19-26 under 35 U.S.C. Â§ 103(a) as being unpatentable over Baskaran and Snyder; and (ii) claims 5, 7, and 8 over Baskaran, Snyder, and Barber. DECISION For the above reasons, the Examiner's decision (i) provisionally rejecting claims 1, 19, and 23 under 35 U.S.C. Â§ 101 based on statutory double patenting is reversed; (ii) rejecting claim 5 under 35 U.S.C. Â§ 112(a) for not being enabled; and (iii) rejecting claims 1-10 and 19-26 under 35 U.S.C. Â§ 103 are reversed. And, for the above reasons, the Examiner's decision rejecting claims 1-10 and 19-26 under 35 U.S.C. Â§ 101 as being directed to patent-ineligible subject matter is affirmed. 21 Appeal2017-004241 Application 13/410,941 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 22