James E. Jackson

Patent Trials and Appeals Board

Jul 14, 2020

2018006778 (P.T.A.B. Jul. 14, 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.
12/564,486 09/22/2009 James E. Jackson AU920050004US2 8492
103765 7590 07/14/2020
IBM Corp-Rochester Drafting Center
1701 North Street Building 256-3
Department SHCB
Endicott, NY 13760
EXAMINER
LEE, WILSON
ART UNIT PAPER NUMBER
2152
NOTIFICATION DATE DELIVERY MODE
07/14/2020 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):
rocdrctr@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte JAMES E. JACKSON
____________________

Appeal 2018-006778
Application 12/564,486
Technology Center 2100
____________________

Before JASON V. MORGAN, JOHN P. PINKERTON, and
JESSICA C. KAISER, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1 and 4, which are all of the claims pending in the
application. 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. Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Br. 1.
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STATEMENT OF THE CASE
Introduction
Appellant’s described and claimed invention is generally directed to a
method of making a change to an information system formed as a deployed
information system. Spec. ¶ 33.2 The Specification explains that a
“deployed information system” is an information system that reaps business
value by directly supporting the attainment of some business purpose of an
enterprise, such as, for example, a deployed financial management system.
Id. ¶ 84. The Specification also explains that a system that manages the
system’s resource is described as a metasystem. Id. ¶ 83.
Figure 4 of the application, which is reproduced below, is a schematic
block diagram showing components of a deployed financial management
system, together with an integration metasystem and an integration system.
Id. ¶¶ 38–39.

2 Our Decision refers to the Final Office Action mailed Feb. 26, 2018
(“Final Act.”); Appellant’s Appeal Brief filed May 1, 2018 (“Appeal Br.”)
and Reply Brief filed June 20, 2018 (“Reply Br.”); the Examiner’s Answer
mailed June 4, 2018 (“Ans.”); and the Specification filed Sept. 22, 2009
(“Spec.”).
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Figure 4 depicts, and the Specification describes, for example, a
financial management system that has two components, deployed financial
management system 304 and deployed financial management metasystem
303, which manages the deployed financial management system 304. Id.
¶ 84. Figure 4 also shows “integration system” 402, which the Specification
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states “contains the shared components needed for integration of deployed
information systems,” and “integration metasystem” 401, which the
Specification states “manages an integration system.” Id. ¶ 85. The
Specification explains that integration system 402 is used by deployed
information system 302, and hence by an instance of a deployed financial
management system 304, “for access to shared integration components such
as hardware, communications services, and shared management services.”
Id. ¶ 86. The Specification also explains that the deployed metasystem 301,
and hence an instance, such as deployed financial management metasystem
303, “extend the integration metasystem 401, and are managed by the
integration metasystem 401.” Id.
Claims 1 and 4 are independent. Claim 1 is representative of the
subject matter on appeal and is reproduced below:
1. A method for making a change to an information system
formed as a deployed information system and a deployed
metasystem comprising:
(a) defining changes through interaction of an
integration metasystem, the integration metasystem managing
the deployed metasystem and an integration system, and the
integration system;
(b) passing said defined changes from said integration
metasystem to said deployed metasystem; and
(c) effecting said change by said deployed metasystem
acting on said deployed information system in accordance with
said defined changes to change elements of said deployed
information system.
Appeal Br. 12 (Claims App.).
Rejections on Appeal
Claims 1 and 4 stand rejected under 35 U.S.C. § 101 as being directed
to an abstract idea without significantly more. Final Act. 3–5.
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Claims 1 and 4 stand rejected under 35 U.S.C. §102(e) as being
anticipated by Suzuki et al. (US 2007/0234337 A1; published Oct. 4, 2007)
(“Suzuki”). Final Act. 5–9.
ANALYSIS
I. SECTION 101 REJECTION
A. Examiner’s Findings and Conclusions,
and Appellant’s Arguments
The Examiner finds that the claims are directed to the concept of
generating tasks based on rules to be completed upon the occurrence of an
event, which has been found to be an abstract idea identified by the courts.
Final Act. 4 (citing Accenture Global Services v. Guidewire Software Inc.,
728 F.3d 1336 (Fed. Cir. 2013). The Examiner also finds that the claims do
not recite additional elements that individually or in combination are
sufficient to ensure that the claims amount to significantly more than the
abstract idea. Id. The Examiner further finds that the claims “fail to recite
any improvements to another technology or technical field, improvements to
the functioning of the computer itself, and/or meaningful limitations beyond
generally linking the use of an abstract idea to a particular environment.” Id.
at 4–5.
Appellant contends the rejection under 35 U.S.C. § 101 is moot
because it fails to meet the standards established by the USPTO in the June
25, 2014, memorandum on preliminary examination instructions
(“Memorandum”) in view of the Supreme Court’s decision in Alice Corp. v.
CLS Bank Int’l, 573 U.S. 208 (2014), and the various USPTO updates to the
Subject Matter Eligibility guidelines issued in 2015 and 2016, none of which
are referenced in the Final Office Action. Appeal Br. 4–8; Reply Br. 2–6.
Appellant argues that the Examiner failed to “properly identify an allegedly
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abstract idea” in the claims and “ignored various features” in the claims,
which go beyond, and are significantly more than, any judicial exception.
Appeal Br. 6–7. According to Appellant, like the claims in Enfish,3 the
claims at issue provide a software-based improvement to computer-related
technology. Id. at 7.
B. Applicable Law
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n,
601 F.3d 1319, 1331 (Fed. Cir. 2010).
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 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.” Alice, 573 U.S. at 216 (quoting Ass’n for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To determine whether
a claim falls within one of these excluded categories, the Court has set out a
two-part framework. The framework requires us first to consider whether
the claim is “directed to one of those patent-ineligible concepts.” Alice, 573
U.S. at 217. If so, we then examine “the elements of [the] claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). That is, we examine
the claim for an “inventive concept,” “an element or combination of

3 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Alice,
573 U.S. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–
73).
In January 2019, the Patent Office issued guidance about this
framework. See 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).4 Under the Revised
Guidance, to decide whether a claim is directed to an abstract idea, we
evaluate whether the claim (1) recites one of the abstract ideas listed in the
Revised Guidance (“Prong One”) and (2) fails to integrate the recited
abstract idea into a practical application (“Prong Two”). See Revised
Guidance, 84 Fed. Reg. at 51, 54. If the claim is directed to an abstract idea,
as noted above, we then determine whether the claim has an inventive
concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality.” Revised Guidance, 84 Fed.
Reg. at 56.

4 See also USPTO, October 2019 Patent Eligibility Guidance Update (Oct.
17, 2019), https://www.uspto.gov/sites/default/files/documents/peg_oct_
2019_update.pdf.
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With these principles in mind, we first analyze whether claim 1 is
directed to an abstract idea.5
C. Abstract Idea
1. USPTO Step 2A, Prong One
Beginning with Step 2A, Prong One, of the Revised Guidance,6 we
must determine “whether the claims at issue are directed to one of those
patent-ineligible concepts,” including the abstract ideas enumerated in the
Revised Guidance. Alice, 573 U.S. at 217. One of the subject matter
groupings identified as an abstract idea in the Revised Guidance is “[c]ertain
methods of organizing human activity—fundamental economic principles or
practices . . . ; commercial . . . interactions (including . . . business relations);
managing personal behavior or relationships or interactions between people
(including . . . following rules or instructions).” Revised Guidance, 84 Fed.
Reg. at 52.
For our prong one analysis, we set aside, for consideration below, the
following technological elements recited in claim 1: “deployed information
system,” “deployed metasystem,” “integration metasystem,” and
“integration system.” Thus, claim 1 recites, “[a] method for making a
change to an information system . . . , including the steps of: (a) “defining
changes through interaction of . . . [components of the system]”; (b) “passing

5 Appellant argues claims 1 and 4 as a group focusing on claim 1. See
Appeal Br. 4–8; Reply Br. 2–6. Thus, we decide the appeal based on
representative claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
6 The Guidance refers to “Step One” as determining whether the claimed
subject matter falls within the four statutory categories identified by 35
U.S.C. § 101: process, machine, manufacture, or composition of matter.
This step is not at issue in this case.
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said defined changes . . . [between components]”; and (c) “effecting said
change . . . to change elements . . . [of the system].”
In the Answer, the Examiner finds that the claims are directed to an
abstract idea because they “are merely directed to defining changes, passing
the changes via the system[,] and effecting the change on [the] deployed
system.” Ans. 2. We agree with the Examiner’s finding. Because the
recited functions of claim 1 require defining, passing, and effecting changes
that are used to “change elements” of an enterprise7 or business information
system, claim 1 focuses on a fundamental economic practice, namely,
“commercial . . . interactions (including . . . business relations), and the
concept of managing interactions between people (including . . . following
rules or instructions).” See Revised Guidance, 84 Fed. Reg. at 52. In that
regard, the Specification defines an “information system” as “consisting of
people, tools, methods, and information organized to collect, validate,
process, transmit, and disseminate data that represent information.” Spec.
¶ 5. The Specification also states that one type of information system is an
“enterprise resource planning system,” such as, for example, financial
management systems (for managing financial resources), human resources
management systems (for managing people within the enterprise), supply
chain management systems (for managing goods and services suppliers), and
customer relationship management systems (for managing customers). Id. ¶
7.

7 The Specification defines “enterprise” as “a company, business,
organization, or other purposeful endeavor” and states “the word is extended
to include projects, and joint ventures involving multiple enterprises.” Spec.
¶ 6.
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Thus, we also conclude that claim 1 focuses on the age old practice of
changing business information systems and, therefore, recites the abstract
idea of organizing human activity. See Revised Guidance, 84 Fed. Reg. at
52.
2. USPTO Step 2A, Prong Two
Because we determine that claim 1 recites an abstract idea, we turn to
prong two of the first step of the Alice analysis and consider whether claim 1
integrates this abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. In doing so, we consider whether there are
any additional elements beyond the abstract idea that, individually or in
combination, “integrate the [abstract idea] into a practical application, using
one or more of the considerations laid out by the Supreme Court and the
Federal Circuit.”8 Revised Guidance, 84 Fed. Reg. at 54–55.
As stated above, the technological elements recited in claim 1 are the
“deployed information system,” “deployed metasystem,” “integration
metasystem,” and “integration system.” These elements are recited at a high
level of generality in claim 1 without sufficient detail or specific
implementation structure to limit the abstract idea to a specific practical
application. These elements are also broadly described in the Specification.
See, e.g., Spec. ¶¶ 33, 84–87, 89, 127, 128, 210–15, 296–303. We find no
indication in the Specification, nor does Appellant direct us to any
indication, that claim 1’s functions of—“defining changes,” “passing said

8 We acknowledge that some of these considerations may be properly
evaluated under step 2 of Alice (step 2B of the Revised Guidance). Solely
for purposes of maintaining consistent treatment within the Office, we
evaluate them under step 1 of Alice (step 2A, prong two, of the Revised
Guidance). See Revised Guidance, 84 Fed. Reg. at 54–55.
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defined changes,” and “effecting said change”— require any specialized
computer hardware or other inventive computer components, i.e., require a
particular machine, invoke any asserted inventive programming, or use other
than generic computer components to perform generic computer functions.
See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) (“[A]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.”).
As discussed supra, Appellant argues that the Examiner “ignored
various features” in the claims, which go beyond, and are significantly more
than, any judicial exception. Appeal Br. 6–7. Appellant also argues that,
like the claims in Enfish, the claims at issue provide a software-based
improvement to computer-related technology. Id. at 7.
We are not persuaded by Appellant’s arguments. First, we are not
persuaded by Appellant’s argument that various features of the claims “go
beyond,” and are “significantly more” than, any judicial exception because
that argument is conclusory and unsupported with any evidence or technical
reasoning explaining why any of the claimed features, including the
additional elements—“deployed information system,” “deployed
metasystem,” “integration metasystem,” and “integration system”—“go
beyond” or are “significantly more.” Indeed, Appellant merely states that
the “claims require, among other things,” and then quotes limitations (a)–(c)
of claim 1. Appeal Br. 6–7; Reply Br. 4–5. Reciting these limitations of
claim 1 is insufficient to demonstrate a practical application because
Appellant has shown these limitations amount to nothing more than the
abstract idea itself. Cf. BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
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1290 (Fed. Cir. 2018) (“It 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.”); cf. also Aatrix Software, Inc. v. Green Shades
Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) (“[T]he ‘inventive
concept’ cannot be the abstract idea itself.”).
Second, we are not persuaded by Appellant’s argument that claim 1
provides a software-based improvement to computer-related technology as
in Enfish. The Examiner finds, and we agree, that the claims at issue “do not
attempt to convey or realize any advantages of defining changes, passing the
changes via the system and effecting the change on [the] deployed system.”
Ans. 3. Appellant’s argument is conclusory and fails to explain how claim 1
allegedly provides any specific “software-based improvement to computer-
related technology” or improvement to the technological elements recited in
claim 1. In particular, Appellant has failed to demonstrate that claim 1
requires any specialized computer hardware or other inventive computer
components, i.e., requires a particular machine, uses other than generic
computer components, or that the claim results in the improvement of a
computer, computer software, or the functioning of a computer or its
components. Nor has Appellant identified any disclosure in the
Specification of any inventive techniques, software-based improvements or
specialized computer components to perform the recited limitations of claim
1.
We also agree with the Examiner’s finding that Enfish is
distinguishable from the claims here. See Ans. 3. In Enfish, the invention at
issue was directed at a new type of logical model for a computer database: a
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self-referential table that allowed the computer to store many different types
of data in a single table and index that data by column and row information.
See Enfish, 822 F.3d at 1330–32. In determining the claims were “not
directed to an abstract idea,” but rather “to a specific improvement to the
way computers operate,” the Federal Circuit noted that “the claims are not
simply directed to any form of storing tabular data, but instead are
specifically directed to a self-referential table for a computer database.” Id.
at 1336–37 (emphasis in original). We find nothing arising to this level of
technical improvement in any of the additional elements recited in claim 1
here as found in Enfish.
Accordingly, we determine that the additional elements recited in
claim 1 do not integrate the recited abstract idea into a practical application.
See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1169–70 (Fed. Cir.
2018); Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262
(Fed. Cir. 2016) (“In this case, the claims are directed not to an improvement
in cellular telephones but simply to the use of cellular telephones as tools in
the aid of a process focused on an abstract idea. That is not enough to
constitute patentable subject matter.”); Revised Guidance, 84 Fed. Reg. at 55
(explaining that courts have identified “merely us[ing] a computer as a tool
to perform an abstract idea” as an example of when a judicial exception may
not have been integrated into a practical application). Further, consistent
with the Examiner’s findings (see Ans. 3), and in view of Appellant’s
Specification (see, e.g., paragraphs 33, 84–87, 89, 127, 128, 210–15, 296–
303), we conclude that claim 1 does not integrate the judicial exception into
a practical application, and thus is directed to the judicial exception itself. In
particular, we determine claim 1 does not recite:
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(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
(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).
3. USPTO Step 2B — Inventive Concept
Finally, we consider whether claim 1 has an inventive concept, that is,
whether any additional claim elements “‘transform the nature of the claim’
into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo,
566 U.S. at 78, 79). This requires us to evaluate whether the additional
claim elements add “a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the field” or
“simply append[] well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality.”
Revised Guidance, 84 Fed. Reg. at 56.
The Examiner finds that the “claims are directed merely to the generic
steps of inputting information (defining changes)[,] passing through a
system[,] and outputting (effecting changes) on the deployed system, [thus,]
the claim is clearly directed to an abstract idea without significantly more.”
Ans. 3. As discussed supra, Appellant argues that the claims recite a
“software-based improvement to computer-related technology.” Appeal Br.
7. Appellant also argues that the claims recite significantly more than any
judicial exception and quotes limitations (a)–(c) of claim 1. Id. at 6–7.
Appellant further argues that the Specification describes “various benefits to
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[Appellant’s] claimed approach when compared with the prior art,” “which
demonstrate that the claims present a particular solution to a particular
problem.” Id. at 8. We are not persuaded by Appellant’s arguments.
First, as discussed above, Appellant has failed to demonstrate that
claim 1 allegedly provides any specific “software-based improvement to
computer-related technology” or improvement to the technological elements
recited in claim 1. In particular, Appellant has failed to demonstrate that
claim 1 requires any specialized computer hardware or other inventive
computer components, i.e., a particular machine, that the claimed invention
is performed using other than generic computer components, or that the
claim results in the improvement of a computer, computer software, or the
functioning of a computer or its components. Second, Appellant has not
cited any portions of the Specification that allegedly describe “various
benefits” of the approach of claim 1. Thus, Appellant has not shown how
the Specification allegedly “demonstrates that the claims present a particular
solution to a particular problem.” Third, as also discussed supra,
Appellant’s quotation of limitations (a)–(c) of claim 1 is not persuasive that
the claims recite significantly more than an abstract idea because Appellant
is arguing nothing more than the abstract idea itself. The law is clear,
however, that the claim elements to be considered under Alice step 2B
cannot be the abstract idea itself. Berkheimer v. HP Inc., 890 F.3d 1369,
1374 (Fed. Cir. 2018) (Moore, J., concurring) (“Berkheimer . . . leave[s]
untouched the numerous cases from [the Federal Circuit] which have held
claims ineligible because the only alleged ‘inventive concept’ is the abstract
idea.”); BSG, 899 F.3d at 1290; Aatrix, 890 F.3d at 1359 (“[T]he ‘inventive
concept’ cannot be the abstract idea itself.”).
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Moreover, we find that the Specification indisputably shows the
additional elements of claim 1 were well-understood, routine, and
conventional at the time of filing because they are described in a general
manner without additional details that would distinguish them from
conventional components. See, e.g., Spec. ¶¶ 33, 84–87, 89, 127, 128, 210–
15, 296–303; see also Berkheimer, 890 F.3d at 1371 (“Relying on the
specification alone may be appropriate where, as in Mayo, the specification
admits . . . .” [that the additional elements were well-understood, routine,
and conventional]). And, as discussed supra, we have determined that claim
1 does not recite a technological improvement to computers, computer
components or software. Accordingly, consistent with the Examiner’s
findings, we determine that the additional elements of claim 1 were well-
understood, routine, and conventional. See, e.g., Alice, 573 U.S. at 225–26
(holding that “implement[ing] the abstract idea . . . on a generic computer”
was not sufficient “to transform an abstract idea into a patent-eligible
invention”); Mortg. Grader, Inc. v. First Choice Loan Servs., Inc., 811 F.3d
1314, 1324–25 (Fed. Cir. 2016) (noting that components such an “interface,”
“network,” and “database” are generic computer components that do not
satisfy the inventive concept requirement); buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends
the information over a network—with no further specification—is not even
arguably inventive.”).
Accordingly, considering claim 1 as a whole, we determine that the
additional elements recited in claim 1 are readily available computing
components performing their ordinary functions and do not provide “a
specific limitation or combination of limitations that are not well-
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understood, routine, conventional activity in the field.” Revised Guidance,
84 Fed. Reg. at 56. Rather, these elements “simply append[] well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality.” Id. Accordingly, we find
that claim 1 does not have an inventive concept.
4. Conclusion
Because we determine that claim 1 is directed to an abstract idea and
does not contain an inventive concept, we sustain the Examiner’s rejection
of claim 1 under 35 U.S.C. § 101. For the same reasons, we sustain the
Examiner’s rejection under 35 U.S.C. § 101 of independent claim 4.
II. SECTION 102(e) REJECTION
The dispositive issue raised by Appellant’s arguments with respect to
the rejection of claim 1 under 35 U.S.C. § 102(e) is whether Suzuki
discloses “an integration system,” as recited in limitation (a) of claim 1,9 and
commensurately recited in claim 4. See Appeal Br. 9–10; Reply Br. 7–8.
The Examiner finds that Suzuki discloses all of the limitations of
claim 1. Final Act. 5–6. In particular, the Examiner finds that Suzuki
discloses the features of limitation (a) as follows:
(a) defining changes (“The user defined settings may be
modification to VM [(virtual machine)]”, paragraphs [0083],
[0158]) through interaction (“server 116 . . . may efficiently
update and/or redeploy computer programs, such as VM”,
paragraph [0138]) of an integration metasystem (“management
server 116”), the integration metasystem (“management server
116”) managing the deployed metasystem (“host computer 102”,

9 With respect to the rejection under § 102(e), Appellant argues claims 1
and 4 as a group focusing on claim 1. See Appeal Br. 4–8; Reply Br. 2–6.
Thus, we decide the appeal based on representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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“server 116 may interact with the host computer 102 to manage”,
paragraph [0138] and an integration system (network 106); and
the integration system (network 106) (paragraph [0138]).
Id. at 6. Thus, the Examiner finds that “network 106” of Suzuki discloses
the claimed “integration system” of limitation (a) of claim 1.
Appellant argues that Suzuki fails to disclose, inter alia, “defining
changes through interaction of an integration metasystem, the integration
metasystem managing the deployed metasystem and an integration
system, and the integration system.” Appeal Br. 9; Reply Br. 7. Appellant
also argues that the Examiner’s “position is confusing and unclear” in view
of the Specification’s definitions of an “information system” and a
“deployed information system.” Appeal Br. 10 (citing Spec. ¶¶ 5,10 84,
respectively). Appellant further argues that Suzuki’s “host computer [102]”
is not equivalent to the claimed “deployed information system.”11 Id.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be

10 We believe that Appellant mistakenly cites paragraph 14 of the
Specification for the definition of “information system.”
11 We are not persuaded by this argument of Appellant’s because the
Examiner relies on Suzuki’s “VM” as disclosing the claimed “deployed
information system,” rather than “host computer 102.” Ans. 4 (citing Suzuki
¶¶ 42–43).
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interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.
We are persuaded by Appellant’s argument that the Examiner erred.
In response to Appellant’s arguments that the Examiner failed to consider
the definitions of certain terms in the Specification, the Examiner
acknowledged that claims are to be interpreted in light of the Specification.
Ans. 3–4 (citing In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993)).
However, the Examiner failed to do so, at least with respect to the term
“integration system.” The Specification describes an “integration system” as
an information system that “contains the shared components needed for
integration of deployed information systems.” Spec. ¶ 85. The
Specification also explains that integration system 402, as shown in Figure
4, “is used by the deployed information system 302, and hence by an
instance of a deployed financial management system 304, for access to
shared integration components such as hardware, communications services,
and shared management services.” Id. ¶ 86. Thus, we determine that the
broadest reasonable interpretation of the term “integration system” to a
person of ordinary skill in the art, in view of the Specification, would be a
system that contains the shared components, such as hardware,
communications services, and shared management services, needed for the
deployed information system.
Suzuki states that “network 106 may be a storage area network
(SAN), the World Wide Web, a corporate intranet site, a partner site,
combinations thereof, and/or other communication networks.” Suzuki ¶ 41.
We find that such a communication network is not a system that contains
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Application 12/564,486

20
shared components, such as hardware, communications services, and shared
management service. Thus, in finding that Suzuki’s “network 106”
discloses the claimed “integration system,” we determine that the
Examiner’s rejection relies on an unreasonably broad construction of the
claim term “integration system.” See Microsoft Corp. v. Proxyconn, Inc.,
789 F.3d 1292, 1298 (Fed. Cir. 2015) (holding the broadest reasonable
construction “must be consistent with the one that those skilled in the art
would reach”) (quoting In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir.
1999)); In re Smith Int’l, Inc., 871 F.3d 1375, 1382 (Fed. Cir. 2017) (“‘[T]he
protocol of giving claims their broadest reasonable interpretation . . . does
not include giving claims a legally incorrect interpretation’ ‘divorced from
the specification and the record evidence.”’) (internal citation omitted)).
On this record, we determine that the Examiner’s anticipation
rejection is based on an incorrect interpretation of the term “integration
system,” as recited in limitation (a) of claim 1. Accordingly, we do not
sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 102(e). For
the same reasons, we do not sustain the Examiner’s rejection of claim 4
under 35 U.S.C. § 102(e).

DECISION
We affirm the Examiner’s rejection of claims 1 and 4 under 35 U.S.C.
§ 101.
We reverse the Examiner’s rejection of claims 1 and 4 under 35
U.S.C. § 102(e).
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Application 12/564,486

21
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R.
§ 41.50(a)(1).
SUMMARY
Claims
Rejected
35 U.S.C. § Reference/
Basis
Affirmed Reversed
1, 4 101 Eligibility 1, 4
1, 4 102(e) Suzuki 1, 4
Overall
Outcome
1, 4

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)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED