HEWLETT PACKARD ENTERPRISE DEVELOPMENT LP

Patent Trials and Appeals Board

Jul 31, 2020

15031431 - (D) (P.T.A.B. Jul. 31, 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.
15/031,431 04/22/2016 Lu Zhao 90196511 1047
146568 7590 07/31/2020
MICRO FOCUS LLC
500 Westover Drive
#12603
Sanford, NC 27330
EXAMINER
WANG, HARRIS C
ART UNIT PAPER NUMBER
2439
NOTIFICATION DATE DELIVERY MODE
07/31/2020 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):
software.ip.mail@microfocus.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LU ZHAO, SUNNYVALE
____________________

Appeal 2019-002908
Application 15/031,431
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, BRADLEY W. BAUMEISTER, and
IRVIN E. BRANCH, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7 and 9–21. Appeal Br. 5. Appellant
has cancelled claim 8. Id. at Claim Appendix i. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.

1 Appellant identifies EntIT Software LLC, a wholly-owned affiliate of
Micro Focus International Plc, is the real party in interest. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Claims 1, 3, 4, and 9 are illustrative of the claimed subject matter
(emphasis, formatting, and bracketed material added):

1. A non-transitory machine-readable storage medium
storing instructions that upon execution cause a system to:
[A.] load code of a web application associated with a
framework;
[B.] model data objects of the framework used by the code
using local parameters with explicit control flow,
[i.] the data objects modeled using the local
parameters comprising
[a.] a request object and
[b.] a response object of the framework,
[ii.] the request object and the response object used
by the code; and
[C.] analyze the code to identify a vulnerability by
analyzing one or more execution paths of the code using the
explicit control flow.

3. The non-transitory machine-readable storage medium
of claim 1, wherein the modeling is based on a specification of
the framework.

4. The non-transitory machine-readable storage medium
of claim 3, wherein the specification does not define the data
objects as parameters, wherein the modeling uses artificial
parameters to represent the data objects.

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9. A method executed by a system comprising a
processor, the method comprising:
[A.] determining a model for a framework,
[i.] wherein the model uses local parameters with
explicit control flow based on a specification of
the framework,
[ii.] the local parameters modeling
[a.] a request object of the framework and
[b.] a response object of the framework,
[iii.] the request object and the response object used
by code of a web application;
[B.] loading the code of the web application that uses the
framework;
[C.] determining data objects including the request object
and the response object of the framework used by the code;
[D.] replacing the request object and the response object
in the framework with respective local parameters of the model;
and
[E.] analyzing the code using the model to identify a
security vulnerability by analyzing one or more execution paths
of the code using the explicit control flow.
REFERENCES2
The Examiner relies on the following references:
Name Reference Date
Artzi US 2012/0102474 A1 Apr. 26, 2012
Artzi US 2012/0131670 A1 May 24, 2012

2 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
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REJECTIONS
A.
The Examiner rejects claims 1–7 and 9–21 under 35 U.S.C. § 101
because “[t]he claimed invention is directed to non-statutory subject matter
because the claim(s) as a whole, considering all claim elements both
individually and in combination, do not amount to significantly more than an
abstract idea” (Final Act. 4), i.e., the claimed invention is directed to patent-
ineligible subject matter. Final Act. 4–6.
We select independent claim 1 as representative. Except for our
ultimate decision, we do not discuss the merits of the § 101 rejection of
claims 2–7 and 9–21 further herein.
B.
The Examiner rejects claims 1–7 and 9–21 under 35 U.S.C. § 103 as
being unpatentable over the combination of Artzi ’670 and Artzi ’474. Final
Act. 7–13. Appellant argues separate patentability for claims 1, 4, and 9. To
the extent that Appellant discusses claims 10 and 13–15, Appellant merely
repeats or references the arguments directed to claims 4 and 9. Appeal Br.
21–22. Such a repeated argument (or referenced argument) is not an
argument for “separate patentability.” Thus, Appellant does not present
separate arguments for claims 10 and 13–15, and Appellant does not
separately argue claims 2, 3, 7, 11, 12, and 16–21.
Therefore, except for our ultimate decision, we do not address the
merits of the § 103 rejection of claims 2, 3, 5–7, and 10–21 further herein.

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OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We highlight the following points.
A. Section 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 U.S. 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 Court’s two-part 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, 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, and thus patent ineligible,
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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
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such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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
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 187; 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.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, 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 part
of the Alice and Mayo framework, where “we must examine the 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 (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.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
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requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
B. USPTO § 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
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2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
C. Examiner’s § 101 Rejection - Alice/Mayo - Parts 1 and 2
C.1. 2019 Revised Guidance Step 2A – Prong One
Applying the Alice/Mayo framework, the Examiner determines that
claim 1 recites an abstract idea “of obtaining and comparing intangible
data.” Final Act. 4.
The claim as a whole is also similar to the claimed invention in
(Electric Power Group v. Alston Grid Inc. August 1, 2016,
Federal Circuit, August 16, 2011) which the Federal Circuit
described as describing to an abstract idea for “gathering and
analyzing information of a specified content, then displaying the
results.”
Final Act. 5 (emphasis added).
In this case, the claim merely recites “load code . . . model
data objects . . . and analyze the code.” That is, the claim merely
claims the idea of a solution or outcome to “identify a
vulnerability by analyzing,” thus clearly would be an idea ‘of

practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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itself’ i.e., an idea standing alone such as an uninstantiated
concept, plan or scheme, as well as a mental process (thinking)
that “can be performed in the human mind, or by a human
using a pen and paper.” CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372[] (Fed. Cir. 2011). As the Federal
Circuit explained, “methods which can be performed mentally,
or which are the equivalent of human mental work, are
unpatentable abstract ideas--the ‘basic tools of scientific and
technological work’ that are open to all.” 654 F.3d at 1371, 99
USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63[]
(1972)). “Courts have examined claims that required the use of a
computer and still found that the underlying, patent-ineligible
invention could be performed via pen and paper or in a person’s
mind.” Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306,
1335[] (Fed. Cir. 2015)[.]
Ans. 4 (emphasis added).
C.2. 2019 Revised Guidance Step 2A – Prong Two
Further applying the Alice/Mayo framework, the Examiner determines
claim 1 is directed to an abstract idea.
[T]he claim is directed to nonstatutory subject matter. “The
claims here are unlike the claims in Enfish[, LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016)]. There, we relied on the
distinction made in Alice between, on one hand, computer-
functionality improvements and, on the other, uses of existing
computer as tools in aid of processes focused on ‘abstract
ideas.’ ” “The present case is different: the focus of the claims is
not on such an improvement in computers as tools, but on certain
independently abstract ideas that use computers as tools.” See
Electric Power Group, LLC v. Alstom SA (Fed. Cir. 2016).
Final Act. 5–6.
C.3. 2019 Revised Guidance Step 2B
Applying the Alice/Mayo framework, the Examiner determines:
Nothing in the claims, understood in light of the specification,
requires anything other than conventional computing device,
network equipment for obtaining and processing data. . . . Unlike
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the eligible claims in Amdocs (Israel), Diehr, and Bascom, in
which elements limiting the exception were individually
conventional but taken together provided an inventive concept
because they improved a technical fie[ld], the claims here do not
invoke any of the consideration that courts have identified as
providing significantly more that an exception. The combination
of steps/elements is no more than the sum of their parts, and
provides nothing more than mere automation of obtaining,
analyzing, and sending information using generic
computing/network devices. Therefore, the claims do not
provide significantly more. See Fairwarning IP, LLC v. latric
System, Inc. (Fed. Cir. 2016) for details; see also Intellectual
Ventures LLC v. Symantec Corp. (Fed. Cir. 2016) and Affinity
Labs of Texas LLC v. Amazon.com Inc. (Fed. Cir. 2016).
Final Act. 6.
D. Appellant’s § 101 Arguments & Panel’s § 101 Analysis
D.1. 2019 Revised Guidance Step 2A, Prong 1
D.1.a.
Claim 1 recites a storage medium storing instructions that upon
execution perform a method for identifying a vulnerability in computer
program code:
A non-transitory machine-readable storage medium
storing instructions that upon execution cause a system to:
[A.] load code of a web application associated with
a framework;
[B.] model data objects of the framework used by
the code using local parameters with explicit control flow,
[i.] the data objects modeled using the local
parameters comprising
[a.] a request object and
[b.] a response object of the
framework,
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[ii.] the request object and the response
object used by the code; and
[C.] analyze the code to identify a vulnerability by
analyzing one or more execution paths of the code using
the explicit control flow.
Claim 1 (formatting and paragraph designators added for clarity and
emphasis added to the claim language that recites an abstract idea.”).
D.1.b.
Appellant argues:
In view of the 2019 SME Guidance, Appellant
respectfully submits that the § 101 rejection has been
rendered moot, since the analysis performed by the
Examiner does not conform to the 2019 SME Guidance.
The 2019 SME Guidance states that there are three
groups of abstract ideas: “mathematical concepts,”
“certain methods of organizing human activity,” and
“mental processes.” 2019 SME Guidance, p. 52. “Claims
that do not recite matter that falls within these enumerated
groupings of abstract ideas should not be treated as
reciting abstract ideas,” except in a “rare circumstance.”
Id., p. 53 (emphasis added).
Appellant respectfully submits that the subject
matter of claim 1 is not a mathematical concept, a certain
method of organizing human activity, or a mental process.
Claim 1 recites a non-transitory machine-readable
storage medium storing instructions that upon execution
cause a system to:
load code of a web application associated
with a framework;
model data objects of the framework used by
the code using local parameters with explicit
control flow, the data objects modeled using
the local parameters comprising a request
object and a response object of the
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framework, the request object and the
response object used by the code; and
analyze the code to identify a vulnerability by
analyzing one or more execution paths of the
code using the explicit control flow.
The subject matter of claim 1 relates to a way of
considering both the code of a web application and the
framework used by the code, using a local parameter
model that avoids the identification of false vulnerabilities
that would result from using global parameters. With the
subject matter of claim 1, a request object and a response
object of a framework that are used by the code of the web
application are modeled as local parameters to allow for a
more effective way of identifying a vulnerability in the
code that does not give rise to the identification of false
vulnerabilities.
The foregoing subject matter clearly does not
merely constitute a mathematical concept, a certain
method of organizing human activity, or a mental process.
Reply Br. 2–3 (emphasis added).
D.1.c.
Appellant’s arguments are not persuasive. First, as to Appellant’s
argument that the Examiner’s analysis does not conform to the 2019 Revised
Guidance, the 2019 Revised Guidance is explicit that:
Failure of USPTO personnel to follow the guidance,
however, is not, in itself, a proper basis for either an appeal
or a petition.
2019 Revised Guidance, 84 Fed. Reg. at 51.
Second, contrary to Appellant’s arguments, we agree with the
Examiner that the modeling and analyzing steps (B and C) of claim 1 are
mental process steps, and Electric Power Group is relevant to claim 1. The
court in Electric Power Group stated:
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In a similar vein, we have treated analyzing information
by steps people go through in their minds, or by
mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category.
. . .
But merely selecting information, by content or source, for
collection, analysis, and display does nothing significant
to differentiate a process from ordinary mental processes,
whose implicit exclusion from § 101 undergirds the
information-based category of abstract ideas.
Electric Power Group, 830 F.3d at 1354–55 (emphasis added).
D.1.d.
We determine that claim 1 relates to a process for identifying a
vulnerability in computer program code (i.e., a mental process); and a
concept performed in the human mind is identified in the 2019 Revised
Guidance, and thus an abstract idea. 2019 Revised Guidance, 84 Fed. Reg.
at 52. We conclude the Examiner correctly determines that claim 1 recites
an abstract idea.

D.2. 2019 Revised Guidance Step 2A, Prong 2
D.2.a.
Having determined that claim 1 recites an abstract idea, we now turn
to whether claim 1 is directed to that abstract idea, or instead integrates the
judicial exception into a practical application.
D.2.b.i.
Appellant repeatedly asserts that claim 1 is directed to “improving
computer functionality.” Appeal Br. 6–10; Reply Br. 3–6. However, in
support thereof, Appellant quotes the entirety of claim 1 (Appeal Br. 7) and
quotes lengthy sections of the Specification (Appeal Br. 8–9; Reply Br. 4–5),
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but does not meaningfully explain how the abstract idea recited in claim 1 is
integrated into a practical application in the form of the asserted improved
computer functionality.
D.2.b.ii.
Also, we determine that the limitation “load[ing] code of a web
application associated with a framework” (step A of claim 1) is insignificant
pre-solution activity. The focus of claim 1 is not on an improvement in
computer-functionality, as in Enfish, but on an abstract idea that uses a
computer as a tool for identifying a vulnerability in computer program code.
This step merely adds insignificant extra-solution activity to the judicial
exception. See MPEP 2106.05(g). The step of loading is mere data
gathering to obtain information to which to apply the modeling and
analyzing steps.
D.2.c.
We agree with the Examiner that claim 1, is directed to an abstract
idea in the form of a mental process. Ans. 4. Consistent with the
Examiner’s determinations, we conclude that claim 1 does not integrate the
judicial exception into a practical application. We determine claim 1 does
not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
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(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a)–(c), (e)–(h). We agree with the Examiner that
claim 1 is directed to a judicial exception, and does not integrate the judicial
exception into a practical application.

D.3. 2019 Revised Guidance Step 2B
D.3.a.
Appellant contends:
The Examiner also incorrectly characterized what
constitutes the additional elements of claim 1. Specifically, the
Examiner stated that the claim “recites some additional elements
such as ‘processor’ and ‘non-transitory storage medium . . . . ’”
. . .
Appellant respectfully submits that the Examiner has
incorrectly identified the additional elements of claim 1. The
additional elements of claim 1 that give rise to improving
computer functionality include:
load code of a web application associated
with a framework;
model data objects of the framework used by
the code using local parameters with explicit control
flow, the data objects modeled using the local
parameters comprising a request object and a
response object of the framework, the request object
and the response object used by the code; and
analyze the code to identify a vulnerability by
analyzing one or more execution paths of the code
using the explicit control flow.
As specifically explained further below, this combination
of elements is inventive over the cited art. Accordingly,
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Appellant respectfully submits that the foregoing additional
elements are not well-understood, routine, and conventional, and
thus constitute the additional elements sufficient to transform the
claimed subject matter into a patent-eligible application.
Moreover, Appellant respectfully submits that the
Examiner has failed to follow the guidance set forth in the
Berkheimer Memorandum issued by the USPTO on April 19,
2018.
Appeal Br. 12–13.
D.3.b.
Appellant’s argument is not persuasive. Essentially, Appellant argues
the “significantly more” analysis requires inclusion of determining whether
the limitations directed to the abstract idea represent well-understood,
routine, conventional activity. We disagree with Appellant’s argument on
two points.
First, we find no such “including the abstract idea” requirement set
forth in the Berkheimer memorandum or any case law. To the contrary,
“[i]t has been clear since Alice that a claimed invention’s use of the
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention ‘significantly more’ than that ineligible concept.”
BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).
Under the Berkheimer memorandum (directed to the second part of
the Alice framework), the Examiner is only required to show that a
“processor” and “a non-transitory storage medium” are well-understood,
routine, and conventional features in the prior art. The Examiner is not
required to show (a) the abstract idea, or (b) the abstract idea in combination
with the argued additional elements, is similarly well-understood, routine,
and conventional. See, e.g., Ass’n for Molecular Pathology v. Myriad
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Genetics, Inc., 569 U.S. 576, 591 (2013) (“Groundbreaking, innovative, or
even brilliant discovery does not by itself satisfy the § 101 inquiry.”); see
also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354,
1359 (Fed. Cir. 2018) (“It is clear from Mayo that the “inventive concept”
cannot be the abstract idea itself.”).
Appellant is wrapping the conventional functions (e.g., generic
processor and non-transitory storage medium) with the abstract idea.
“[U]nder the Mayo/Alice framework, a claim directed to a newly discovered
law of nature (or natural phenomenon or abstract idea) cannot rely on the
novelty of that discovery for the inventive concept necessary for patent
eligibility.” Genetic Techs. v. Merial, 818 F.3d at 1369, 1376 (Fed. Cir.
2016); see Diehr, 450 U.S. at 188–89.
Second, Appellant refers to the Office’s memorandum issued
April 19, 2018 (the “Berkheimer Memorandum”).5 The Office’s Berkheimer
Memorandum requires that, when performing an analysis to determine
whether “an additional element (or combination of elements) represents
well-understood, routine or conventional activity,” an Examiner must
support such a rejection with a written finding of one or more of the
following:
1. A citation to an express statement in the specification
or to a statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional nature
of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-

5 USPTO memorandum issued on April 19, 2018, titled “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.).”
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understood, routine, conventional nature of the additional
element(s). . . .
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official notice
of the well-understood, routine, conventional nature of the
additional element(s).
Berkheimer Memorandum at 3–4.
We disagree with Appellant’s assertion that no Berkheimer
Memorandum compliant citation has been provided. In addition to the
judicial exception, the preamble of claim 1 merely requires that the recited
steps be stored in a “machine-readable storage medium” and executed on a
“system” (or “processor” in subsequent claims). The Examiner has cited to
Alice (Final Act. 6; Ans. 5), and Appellant acknowledges the relevance of
Alice (Appeal Br. 5–6 and 10–11). In order to transform a judicial exception
into a patent-eligible application, the additional element or combination of
elements must do “‘more than simply stat[e] the [judicial exception] while
adding the words ‘apply it.’” Alice, 573 U.S. at 221 (quoting Mayo, 566
U.S. at 72).
[T]he claims at issue amount to “nothing significantly
more” than an instruction to apply the abstract idea of
intermediated settlement using some unspecified, generic
computer. Under our precedents, that is not “enough” to
transform an abstract idea into a patent-eligible invention.
Alice, 573 U.S. at 225–226 (citation omitted).
Contrary to Appellant’s assertion, citation to Alice is sufficient to
support a finding that “processor (or system)” is conventional. See
Berkehimer Memorandum at 3−4 (noting that it is sufficient for the
Examiner to support a rejection with a written finding based on citation to
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one or more of the court decisions discussed in MPEP § 2106.05(d)(II),
which includes Alice).
Similarly, the Examiner’s citation to Versata (Ans. 4) is sufficient to
support a finding that a “machine-readable storage medium” is conventional.
MPEP § 2106.05(d)(II)(iv) includes Versata (“Storing and retrieving
information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d
1306, 1334[] (Fed. Cir. 2015)”).
Therefore, we are unpersuaded by Appellant’s argument that further
evidence is required.
D.3.c.
We agree that the Examiner correctly determines that in addition to
the abstract idea, claim 1 recites only well-understood, routine, conventional
elements/combination of elements previously known in the industry. In
view of Appellant’s Specification, and consistent with the Examiner’s
determinations, we determine that beyond the abstract idea, the claims do
not recite:
(vi) a specific limitation other than what is well-understood,
routine, conventional activity in the field or
unconventional steps that confine the claim to a particular
useful application.
See MPEP § 2106.05(d).
E. § 103 – Claim 1
E.1.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
The Examiner conceded that Artzi ’670 does not “teach
wherein the web application is associated with a framework and
wherein the data objects [of the framework and modeled using
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local parameters] include [a] request object and a response
object of the framework, the request object and the response
object used by the code.” Office Action at 8.
The Examiner asserted that Artzi ’474 teaches the subject
matter of claim 1 conceded by the Examiner to be missing from
Artzi ’670. Id.
There is no teaching or hint that the framework of
Artzi ’474 includes a request object and a response object that
are modeled using local parameters, where the request object and
the response object of the framework are used by the code of the
web application.
Appeal Br. 15 (emphasis added).
We are unpersuaded by Appellant’s argument. Appellant does not
address the actual reasoning of the Examiner’s rejection. Instead, Appellant
attacks the Artzi ’474 reference singly for lacking a teaching that the
Examiner relied on a combination of Artzi ’670 and Artzi ’474 to show.
In particular, the rejection does not rely on Artzi ’474 for teaching the
“modeled using local parameters” or “of the framework” aspects disputed by
Appellant. Rather, the Examiner relied on Artzi ’670 to show these
limitations (Final Act. 7), and relied Artzi ’474 to show “wherein the data
objects include at least one request object and at least one response object,
the request object and the response object used by the code” (Final Act. 8).
The Examiner then reasoned that it would have been obvious to modify the
teachings as in Artzi ’670 to use the request object and the response object
as taught by Artzi ’474. Final Act. 8. One cannot show nonobviousness by
attacking references individually when the rejection is based on a
combination of references. In re Merck & Co. Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(explaining the relevant inquiry is whether the claimed subject matter would
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have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references).
E.2.
Also, Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
The Examiner asserted that ¶¶ [0035]-[0036] of Artzi ’474
teach a request object and a response object. Id. These passages
of Artzi ’474 refer to “HttpServletRequest” and
“HttpServletResponse.” Artzi ’474, ¶¶ [0035]-[0036]. Thus,
presumably, the Examiner is equating the request object and
response object of claim 1 with HttpServletRequest and
HttpServletResponse in Artzi ’474. Note, however, that the
HttpServletRequest and HttpServletResponse objects appear in
source code 324 shown in Fig. 4 of Artzi ’474. Artzi ’474,
¶ [0033].
The framework of Artzi ’474 is represented by a
configuration file in Fig. 5 of Artzi ’474. Id., ¶¶ [0033, 0029]. It
is clear that the configuration file of the framework of Artzi ’474
shown in Fig. 5 does not include the HttpServletRequest and
HttpServletResponse objects identified by the Examiner, and
therefore, the HttpServletRequest and HttpServletResponse are
not the request object and response object of the framework
recited in claim 1.
Appeal Br. 15–16 (emphasis added).
We are unpersuaded by Appellant’s argument. Appellant correctly
points out that figure 4 of Artzi ’474 shows source code and figure 5 of
Artzi ’474 shows the configuration file of the framework. Further,
Appellant correctly points out that the request object and a response object
are shown as part of figure 4 and not figure 5 as required by claim 1.
However, Appellant overlooks that Artzi ’474 at paragraph 37 indicates
these figure 4 source code objects are passed as arguments to the
configuration file of figure 5. Therefore, we conclude the Examiner
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correctly determined the HttpServletRequest and HttpServletResponse are a
request object and response object of the framework.

F. § 103 – Claims 4 and 9
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 4 under 35 U.S.C. § 103.
F.1. Claim 4 Argument
The Examiner [] erred in asserting that Artzi ’474
discloses that “the modelling uses artificial parameters to
represent the data objects.” Office Action at 9. The Examiner
cited ¶¶ [0048-0049] of Artzi ’474 as purportedly disclosing this
feature. Id. The Examiner asserted that these passages [o]f
Artzi ’474 use “synthetic method parameters.” Id. (emphasis
added).
The foregoing characterization of Artzi ’474 is incorrect.
The cited passages of Artzi ’474 refer to synthetic methods, not
“synthetic method parameters” as asserted by the Examiner. A
person of ordinary skill in the art would understand that a
synthetic method is a program routine. For example, ¶ [0041] of
Artzi ’474 states that an example synthetic method is a “user_
entry()” method, which clearly indicates that the synthetic
method is program code. It is incorrect to equate the synthetic
methods of Artzi ’474 with the “artificial parameters” of claim 4.
Appeal Br. 18.
F.2. Claim 9 Argument
Appellant respectfully submits that the cited references
also do not teach or hint at “replacing the request object and the
response object in the framework with respective local
parameters of the model.”
The Examiner has failed to establish a prima facie case of
obviousness with respect to claim 9 since the Examiner has failed
to address a specific element of claim 9 that is not recited in
claims 1-3. Specifically, although claim 2 recites that the model
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“replaces corresponding portions of the code with the modelled
local parameters during the analyzing,” this is different from
“replacing the request object and the response object in the
framework with respect to local parameters of the model,” as
recited in claim 9.
Appeal Br. 20.
F.3. Panel’s Analysis
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“A rejection based on section 103 clearly must rest on a factual basis[.]” In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.” Id.
As to claim 4, the Examiner finds that Artzi ’474 teaches “modeling
uses artificial parameters to represent the data objects” at paragraphs 48–49.
Final Act. 9. Further, as to claim 9, the Examiner finds:
Artzi ’670 teaches wherein data objects of the framework
used by the code are replaced using local parameters (Paragraph
[0025]). Artzi ’474 teaches wherein request and response objects
of the framework are data objects. The combination clearly
yields replacing “request object and response object . . . with
local parameters” as claimed in Claim 9.
Ans. 9.
We are unable to locate support for the Examiner’s findings in the
cited paragraphs of Artzi ’670 and Artzi ’474. We conclude the Examiner’s
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analysis fails to meet the required standard because the rejection does not
adequately explain the Examiner’s findings of fact.
We conclude, consistent with Appellant’s arguments that there is
insufficient articulated reasoning to support the Examiner’s finding that
Artzi ’670 and Artzi ’474 disclose the argued claim limitations. Therefore,
we conclude that there is insufficient articulated reasoning to support the
Examiner’s final conclusion that claim 4 and 9 would have been obvious to
one of ordinary skill in the art at the time of Appellant’s invention.

CONCLUSION
The Examiner has not erred in rejecting claims 1–7 and 9–21 under
35 U.S.C. § 101, as being directed to patent-ineligible subject matter.
The Examiner has not erred in rejecting claims 1–3 and 7 as being
unpatentable under 35 U.S.C. § 103.
Appellant has shown that the Examiner erred in rejecting claims 4–6
and 9–21 as being unpatentable under 35 U.S.C. § 103.
The Examiner’s rejection of claims 1–7 and 9–21 under 35 U.S.C.
§ 101, as being directed to patent-ineligible subject matter, is affirmed.
The Examiner’s rejection of claims 1–3 and 7 as being unpatentable
under 35 U.S.C. § 103 is affirmed.
The Examiner’s rejection of claims 4–6 and 9–21 as being
unpatentable under 35 U.S.C. § 103 is reversed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–7, 9–21 101 Eligibility 1–7, 9–21
1–7, 9–21 103 Artzi ’670, Artzi ’474 1–3, 7 4–6, 9–21
Overall
Outcome

1–7, 9–21
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