Jens Schimmelpfennig

Patent Trials and Appeals Board

Oct 1, 2019

13768409 - (D) (P.T.A.B. Oct. 1, 2019)

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.
13/768,409 02/15/2013 Jens SCHIMMELPFENNIG 5135-98 1021
23117 7590 10/01/2019
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
DIVELBISS, MATTHEW H
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JENS SCHIMMELPFENNIG
____________

Appeal 2018‐005833
Application 13/768,409
Technology Center 3600
____________

Before ERIC B. CHEN, IRVIN E. BRANCH, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–12 and 14–24, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We reference, herein, the Final Action mailed September 5, 2017 (“Final”),
Appeal Brief filed April 25, 2018 (“Br.”), Examiner’s Answer mailed
April 4, 2018 (“Ans.”), Reply Brief filed May 17, 2018 (“Reply”), and
Specification filed February 15, 2013 (“Spec.”).
2 According to Appellant, the real party in interest is “SOFTWARE AG.”
Br. 3.
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STATEMENT OF THE CASE
APPELLANT’S INVENTION
The invention relates to “dynamically adapting processes.” Spec. 1,
l. 8. Claim 1 is illustrative of the claimed invention and reproduced, below,
with emphasis on “additional elements” (explained infra).
1. A computer-implemented method for adapting
at least one process defined as a base model in a process
management system, the at least one process being a physical
process, the method comprising:
storing, in non-transitory storage associated with the process
management system, a base model defining the at least one
process;
defining, in the process management system, a plurality of
adaptation layers separate from the base model, wherein each of
the adaptation layers comprises at least one definition of an
adaptation to be performed relative to the base model and
aggregation rules defining how to apply the respective
adaptation layer relative to the base model, each adaptation
layer defining, separate from and relative to the base model, a
different adaptation of the base model,
at least one adaptation layer defining a model element that is
not present in the base model and aggregation rules for adding
the model element that is not present in the base model into a
specified location relative to the base model to provide a
modified process flow of the base model, at least one adaptation
layer defining, relative to the base model, a modification to a
property of one or more model elements included in the base
model, and at least one adaptation layer identifying one or more
elements included in the base model and aggregation rules to
delete the identified one or more elements relative to the base
model or replace the identified one or more elements with one
or more other elements to provide a modified process flow of
the base model;
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receiving an input selecting one or more of the defined
adaptation layers; and
in response to the received input, dynamically applying, in
connection with at least one processor, the selected adaptation
layer(s) on the base model in accordance with at least one
aggregation rule included in the selected adaptation layer(s), to
generate an adapted model of the at least one process in the
base model,
wherein the adapted model is dynamically generated at runtime
by aggregating the base model with the selected adaptation
layer(s) without changing the base model,
wherein the generated adapted model includes at least one
model element that is not present in the base model and/or
at least one modification to one or more model elements
included in the base model to actively modify the physical
process,
wherein the base model comprises at least one restriction for the
at least one aggregation rule included in the selected adaptation
layer(s), defining which types of adaptations of the base model
are allowed to be performed.
Br. 31–32 (claims appendix).
REJECTIONS
Claims 1–12 and 14–24 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. Final 2–7.
Claims 1–12 and 14–24 stand rejected under 35 U.S.C. § 103 as
obvious over Hallerbach,3 Baeuerle (US 2009/0281777 A1; published Nov.
12, 2009), and Prigge (US 2010/0153149 A1; published June 17, 2010).
Final 8–50.

3 Configuration and Management of Process Variants, Handbook on
Business Process Management 1, Berlin Heidelberg, 237 (2010),
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REJECTION UNDER 35 U.S.C. § 101
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014) (internal quotation marks and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
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, 69 (1972)). Concepts
determined to be patent-eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
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rubber, smelting ores” (id. at 184 n.7 (quoting Corning v. Burden,
56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson,
409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme 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. (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
step 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 (internal citation
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
PTO GUIDANCE
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”). Under the Guidance, 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 interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (MPEP) § 2106.05(a)–(c), (e)–(h) (9th Ed.,
Rev. 08.2017, Jan. 2018)).
See Guidance, 84 Fed. Reg. at 52, 54–55. Only if a claim (1) recites a
judicial exception and (2) does not integrate that exception into a practical
application, we conclude the claim is directed to a judicial exception
(id. at 54) and then look to whether the claim:
(3) adds a specific limitation or combination of limitations
beyond the judicial exception that are not “well-understood,
routine, conventional” activity in the field (see
MPEP § 2106.05(d)); or
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.
ANALYSIS
Claim 1 is representative of claims 2–12 and 14–24 for this rejection.
See 37 C.F.R. § 41.37(c)(1)(iv). There is no dispute that claim 1 falls within
a category of patentable subject matter. See 35 U.S.C. § 101 (“process,
machine, manufacture, or composition of matter”); see also Guidance,
84 Fed. Reg. at 53–54 (“Step 1”). We accordingly turn to the issues raised
by the Guidance and Appellant’s arguments.
Step 2A, Prong One:4 Does the Claim Recite
Any Judicial Exceptions?
Turning to the first issue set forth by the Guidance (see supra 5,
bullet “(1)”), we agree with the Examiner that claim 1 recites judicial

4 The Guidance separates the enumerated issues (1) to (4) (see supra 6) into
Steps 2A(1), 2A(2), and 2B, as follows:
[T]he revised procedure . . . focuses on two aspects [of whether
a claim is “directed to” a judicial exception under the first
step of the Alice/Mayo test (USPTO Step 2A)]: (1) [w]hether
the claim recites a judicial exception; and (2) whether a recited
judicial exception is integrated into a practical application.
[W]hen a claim recites a judicial exception and fails to integrate
the exception into a practical application, . . . further analysis
pursuant to the second step of the Alice/Mayo test (USPTO
Step 2B) . . . is needed . . . in accordance with existing USPTO
guidance as modified in April 2018.[footnote omitted]
84 Fed. Reg. at 51 (referencing, via the omitted footnote, “USPTO
Memorandum of April 19, 2018, ‘Changes in Examination Procedure
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exceptions. Specifically, we agree with the Examiner’s corresponding
identification of all un-emphasized claim features of reproduced claim 1
(supra 2–3). Final 3–4. We also agree “the claim [recites] defining and
applying [of] adaptations to a process management system” (Final 2) and
“enhanc[ing] the arrangement [of the] workflow processes in a dynamic and
rule based fashion” (Ans. 4). We further agree that, absent more, “design
and management of business processes in a company including cycle
management and checks in regard to changes to business processes are . . .
abstract concepts.” Id. at 4–5.
We add that each of the un-emphasized claim features of reproduced
claim 1 fall within the Guidance’s following categories of judicial
exceptions:5 “(b) Certain methods of organizing human activity—
fundamental economic principles or practices” (Guidance,
84 Fed. Reg. at 52); and/or “(c) Mental processes—concepts performed in
the human mind” (id.). We determine the un-emphasized claim features

Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.)’ (Apr. 19, 2018), available at https://
www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF [ . . . ’USPTO Berkheimer Memorandum’].”).
5 The Examiner alleges judicial exceptions not recognized by the Guidance.
For example, the Examiner alleges exceptions of: “collecting information,
analyzing it, and displaying certain results of the collection and analysis”
(Final 2–3); and “obtaining and comparing intangible data” (id. at 3).
Pursuant to USPTO policy, we do not uphold these determinations.
See Guidance 84 Fed. Reg. at 51 (“All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.”). We do
not, however, find the examiner has erred as a matter of law. See
id. (“Rejections will continue to be based upon the substantive law[.]”). We
apply the Guidance to facilitate prosecution.
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plainly constitute a fundamental economic practice of maintaining process
flows for business operations and corresponding mental steps.
We add Appendixes A and B (attached) to show a long-practiced
model of a process flow. They illustrate typical flowcharts for evaluating
tort claims (legal actions) and exemplify the claimed modeling of a process
flow as a “base model” and associated “adaptation layers.”
Appendix A shows a base process flowchart for ascribing an action to
a specific tort or as non-tortious. The flowchart exemplifies the claimed
base model.6
Appendix B shows a sub-process flowchart for adapting the base
process. The flowchart shows, specifically, a sub-process (i.e., more detail)
for determining whether an action constitutes a defamation tort of libel or
slander. The flowchart replaces a branch of the base process flowchart (the
defamation branch shown within the red dashed lines of Appendix A) and
exemplifies the claimed adaptation layer for replacing an element of the base
model.
We also add that the claimed use of the base model to represent a
“physical process” constitutes a judicially-recognized abstraction, because
the representation constitutes ‘printed matter’ that is not functionally related
to the claimed method. See Praxair Distribution, Inc. v. Mallinckrodt
Hosp. Prod. IP Ltd., 890 F.3d 1024, 1031–33 (Fed. Cir. 2018). That is, the
claimed representation limits the content of information within the base
model and is not interrelated with the rest of the claim (e.g., does not impact

6 We are corresponding the claim terms, in quotes, to the flowcharts for
purposes of analysis. We are not attempting to read claim 1 on the
flowcharts.
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how the claim steps are performed to adapt the base model). Id. Such
claim restrictions fall outside the scope of 35 U.S.C. § 101. Id. at 1032.
For the foregoing reasons, we determine claim 1 recites judicial
exceptions.
Step 2A, Prong Two: Are the Recited Judicial Exceptions
Integrated Into a Practical Application?
Turning to the second issue set forth by the Guidance (see supra 5,
bullet “(2)”), we agree with the Examiner that the recited judicial exceptions
are not integrated into a practical application. See Guidance,
84 Fed. Reg. at 53 (describing a “practical application” as a “meaningful
limit on the [recited judicial exceptions], such that the claim is more than a
drafting effort designed to monopolize the [exceptions]”). Specifically, we
agree “[t]he application of computer technology in . . . [claim 1] is merely
. . . a computer[,] . . . storing . . . in non-transitory storage associated with the
process management system[,] . . . and receiving an input [to select the]
adaptation layers[.]” Final 5 (quotation marks omitted). We also agree
these claim features are “no more than a general linking of the use of the . . .
[judicial exceptions] to a particular technological environment (the use of
computers to calculate and transmit data).” Final 4–5. We further agree
claim 1 does not recite “how [technological solutions] are occurring
. . . through [the invention’s] adaptation processes.” Ans. 6 (original
emphasis); see also Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335
(Fed. Cir. 2018) (explaining, throughout the opinion, the need to recite
“how” results are achieved).
For the foregoing reasons, we determine claim 1 is directed to the
recited judicial exceptions—not to a practical application thereof.
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Step 2B: Does the Claim Recite Anything That Is
Beyond the Recited Judicial Exceptions and Not a Well-Understood,
Routine, Conventional Activity?
Turning to the third and fourth issues set forth by the Guidance
(see supra 6, bullets “(3)” and “(4)”), we agree with the Examiner that the
claimed invention does not comprise a feature that is neither a judicial
exception nor “well-understood, routine, conventional” (herein
“conventional”). 84 Fed. Reg. at 56. Specifically, we agree that Appellant’s
Specification shows the claimed computer elements are generic. Final 5
(citing Spec. 23, l. 32–24, l. 18). We also agree the USPTO July 2015
Update: Subject Matter Eligibility (July 30, 2015)7 shows their claimed
“storing” and “receiving an input” functions are generic. Final 5 (citing July
2015 Update at 7).
We add that the claimed computer elements are the only additional
elements (i.e., only features that are not judicial exceptions). Therefore,
because claim 1 does not specify any further involvement of the computer
elements, claim 1 recites all additional elements as generic computer
technology that merely applies the recited judicial exceptions. See
Guidance, 84 Fed. Reg. at 55 (“apply it” bullet corresponding to the
Guidance’s footnote 30). That is, the additional elements are “mere
instructions to apply a judicial exception.” Id. at n. 30; see also MPEP

7 The July 2015 Update is available at https://www.uspto.gov/
sites/default/files/documents/iegjuly-2015-update.pdf. The Update presents
a list of computer functions that are judicially-recognized as conventional.
See also MPEP § 2106.05(d)(II) (presenting a substantially similar list of
computer functions that are judicially-recognized as conventional; cited by
the Berkheimer Memorandum at, § III.A.2, as sufficient support for a
Step 2B finding).
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§ 2106.05(f) (cited by the Guidance’s footnote 30 as instructive for this
issue).
For the foregoing reasons, we determine the claimed additional
elements do nothing more than append generic computer technology that
merely applies the recited judicial exceptions.
Appellant’s Arguments
Appellant contends the claimed invention provides advantages in the
art of managing “complex business processes . . . using specialized software
tools.” Br. 12. Specifically, Appellant contends: “processes will be able to
automatically adapt themselves to [specific] machinery and environments”
(id. at 13; see also id. at 14); “a single base model may be changed once
[and all] process variants . . . will incorporate the change” (id.); “[w]hen
releasing a new variation . . . , only the new adaptation layers may need to be
examined and released” (id. at 14); and “[w]ith adaptation layers . . . , the
adapted model is dynamically generated at runtime” (id.). Appellant further
contends these benefits constitute a “technical advantage”: “reduced
memory and processing complexities (e.g., due to reduction of redundant
information)” (id. at 15); and “an adapted model [that] can be produced
dynamically and flexibly, while . . . [also being] consistent and up to date”
(id.; see also Reply 5).
We are unpersuaded. The argued benefits result solely from the
claimed judicial exceptions; e.g., the “reduction of redundant information”
(Br. 15) results from using a base model (base flowchart) and adaptations to
reduce an overall quantity of recorded process flow sequences. “[An]
advance [that] lies entirely in the realm of abstract ideas . . . is ineligible for
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patenting.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir.
2018), cert. denied, 139 S. Ct. 2747 (2019).
Appellant also contends the benefits arise from claimed “specific
‘rules’ (as even acknowledged by . . . the Examiner’s Answer) that improve
computer-related technology by allowing computer performance of
functions not previously performable by a computer.” Reply 5.
We are unpersuaded. Appellant is referencing a claimed process of
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315 (Fed.
Cir. 2016), which was held patent-eligible in part because of “us[ing] a
combined order of specific rules that renders information into a specific
format that is then used and applied to create desired results” (id. at 1315).
The underlying basis for this finding was that a claim reciting a judicial
exception is nonetheless patent-eligible if reciting a mechanism that prevents
preemption of the exception; i.e., the claimed rules satisfied this
criterion. Id. at 1314. McRO explains:
The preemption concern arises when the claims are not
directed to a specific invention and instead improperly
monopolize the basic tools of scientific and technological
work. . . . A patent is not good for an effect, or the result
of a certain process because such patents would prohibit
all other persons from making the same thing by any
means whatsoever. A patent may issue for the means or
method of producing a certain result, or effect, and not
for the result or effect produced. We therefore look to
whether the claims in these patents 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.
Id. (citations and quotation marks omitted).
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The claim features Appellant argues do not fall within the concerns
raised in McRO. For example, even assuming the claimed base model and
adaptation layers constitute specific rules, they are also basic tools of a
fundamental economic practice—namely basic tools of maintaining process
flows. Accordingly, the argued claim features do not prevent preemption of
a judicial exception.
Appellant also contends claim 1 compels a finding of patent-eligibility
under DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014). Br. 20–21. We are unpersuaded. Like the claim addressed
by McRO, the claim addressed by DDR was held patent-eligible because of
reciting a specific mechanism of the invention and thereby preventing
preemption of the recited abstract ideas. DDR, 773 F.3d at 1257–59. As
explained above, Appellant’s claim 1 is not specific in this regard.
Appellant also contends claim 1 compels a finding of patent-eligibility
under Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) and
Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299 (Fed. Cir. 2018).
Reply 3, 6. We are unpersuaded. The argued principles of Enfish and
Finjan are explained within Finjan as follows:
In Enfish, . . . the court determined that claims related to
a database architecture that used a new, self-referential
logical table were non-abstract because they focused on
“an improvement to computer functionality itself, not on
economic or other tasks for which a computer is used in
its ordinary capacity.” [822 F.3d] at 1336. . . . Enfish’s
self-referential database could be launched “with no or
only minimal column definitions” and configured and
adapted “on-the-fly.” Id. at 1333.
Similarly, the method of claim 1 employs a new kind of
file that enables a computer security system to do things
it could not do before.
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879 F.3d at 1304–05. Unlike the above-described claims of Enfish and
Finjan, Appellant’s argued claim features do not focus on “computer
functionality itself.” Id. (above block quote). Rather, the argued features
focus on a basic tool of process flows—a base model and adaptations—“for
which a computer is used in its ordinary capacity.” Id. (above block quote).
See also Benson, 409 U.S. at 68 (Claim focused on a mathematical
relationship and was, thus, patent-ineligible despite improving a calculation
of a computer.)
Appellant also contends “the specific features recited in . . . [claim 1]
cannot be performed in the human mind or by a human using a pen and
paper.” Br. 19. We are unpersuaded for each of two reasons. First, as
explained above, we find claim 1 is also directed a fundamental economic
practice. Second, as explained in the Guidance, “if a claim . . . covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the
claim cannot practically be performed in the mind.” Guidance, 84 Fed. Reg.
at 52 n. 14. For the reasons presented in our analysis for Steps 2A and 2B,
claim 1 satisfies this “mental processes” description.
Appellant also contends, pursuant to the Berkheimer Memorandum
(see supra fn. 2), the Examiner must present evidence that the claimed
additional elements impart only “well-understood, routine, conventional”
activities. Reply 4–5. We are unpersuaded for each of two reasons.
First, Appellant does not address the Examiner’s presented evidence
that “[t]he application of computer technology in . . . [claim 1] is merely
routine and conventional.” Final 5 (block-quoted at supra 11; citing Spec.
23, l. 32–24, l. 18 and July 2015 Update at 7).
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Second, even assuming the Examiner did not present such evidence,
the Examiner must do so only if the rejection rests on a finding that an
additional element constitutes a “well-understood, routine, conventional”
activity. See USPTO Berkheimer Memorandum 3 (“[A]n additional element
(or combination of elements) is not well-understood, routine or conventional
unless the examiner finds, and expressly supports a rejection in writing with,
one or more of the following . . .”). As discussed, the claimed additional
elements constitute mere instructions to apply an abstract idea on a
computer. See supra 11, Step 2B. Neither Berkheimer nor the USPTO
Berkheimer Memorandum concerns mere instructions to ‘apply’ a judicial
exception on a computer. See USPTO Berkheimer Memorandum, 1–2
(“Berkheimer informs the inquiry into . . . well-understood, routine,
conventional activity.”); see also id. at 3 (“This memorandum revises
. . . MPEP § 2106.07(a) . . . and . . . (b)); Guidance 84 Fed. Reg. at 55 n. 30
(“See MPEP 2106.05(f) for . . . mere instructions to apply a judicial
exception”); MPEP 2106.05(f) (“[T]he well-understood, routine,
conventional consideration (see MPEP § 2106.05(d)) . . . may assist . . . a
determination of . . . mere instructions to apply an exception.” (emphasis
added)).
CONCLUSION
For the foregoing reasons, we sustain the rejection of claims 1–12 and
14–24 under 35 U.S.C. § 101.
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REJECTION UNDER 35 U.S.C. § 103
ANALYSIS
Claims 1–12, 14–16, 20–22, and 24
Claim 1 is representative of claims 2–12, 14–16, 20–22, and 24 for
this rejection. See 37 C.F.R. § 41.37(c)(1)(iv).
A first issue is whether Hallerbach teaches or suggests the claimed
“dynamically applying . . . the selected adaptation layer(s) . . . to generate an
adapted model of . . . the base model . . . at runtime . . . without changing the
base model.” Br. 22. Appellant contends Hallerbach creates finalized
process flows by cloning and then adjusting a base process, thus “changing
the processes defined in the base process, . . . start[ing] in a completely
different direction from that which is claimed.” Id.; see also id. at 25
(Hallerbach’s “grouped change operations . . . are not dynamically applied
on the base model (at runtime) to provide adapted model without changing
the base model.”).
We are unpersuaded for each of two reasons. First, one of ordinary
skill in the art (herein “artisan”) would understand Hallerbach as
maintaining a base process during runtime—not as changing a base
process—because Hallerbach teaches that a process variant (i.e., finalized
process) is configured from a base process (Hallerbach 243) and sometimes
configured during runtime (id. at 242). Moreover, even assuming
Hallerbach clones and then adjusts a base process (as argued), Appellant
does not explain why (much less show) such cloning/adjusting would be
understood as changing the base process at runtime.
A second issue is whether Hallerbach teaches or suggests the claimed
“adaptation layers separate from the base model, . . . each . . . [defining] an
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adaptation to be performed relative to the base model and . . . how to apply
the respective adaptation layer relative to the base model.” Br. 24, 26.
Appellant contends that neither Hallerbach’s process variants nor its change
operations (which configure a process variant from a base process) teach the
claimed adaptation layers. Id. Specifically, Appellant contends the process
variants “are not definitions of adaptations to be performed relative to the
base model and do not . . . defin[e] how to apply the respective adaptation
layer relative to the base model . . . [, but] instead are themselves
final versions of the adapted process models.” Id. at 24. Appellant contends
the “change operations (see Table 1[)] are applied to a base model[, but are]
not adaptation layers including the specific information [claimed].” Id.
at 25.
We are unpersuaded. The Examiner finds Hallerbach’s change
operations teach the claimed adaptation layers. Ans. 8. We agree. Because
the change operations are applied to a base process (Hallerbach 243), an
artisan would understand a change operation as being separate from base
processes. Because the change operations have respective “purposes” and
“parameters” (id. at Table 1), the artisan would understand a change
operation as defining an adaptation (purpose) and describing how the
adaptation is applied to a base model (parameters).
A third issue is whether Hallerbach teaches or suggests the claimed
“base model compris[ing a] . . . restriction . . . defining which types of
adaptations of the base model are allowed to be performed.” Appellant
contends Hallerbach’s change operations are not comprised by the base
process and therefore cannot teach the claimed restriction. Br. 26–27.
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We are unpersuaded. The Examiner finds Hallerbach’s process
context teaches the claimed restriction. Final 14. We agree. Hallerbach
teaches a base process as having a process context that determines (i.e.,
dictates) the applicable change operations. Hallerbach 237–39. In an
example, a base process is a master process for managing vehicle repair and
the available change operations add specific requirements (locality-specific)
for managing vehicle repair. Id. at 238. Appellant does not show, nor even
argue, such a process context (emphasized above) fails to teach or suggest
the claimed restriction.
For the foregoing reasons, we sustain the rejection of claims 1–12,
14–16, 20–22, and 24 under 35 U.S.C. § 103.
Claims 17–19 and 23
Claim 17 depends from claim 1 and adds that “the . . . restriction . . .
defines an order of aggregating the adaptation layers.” Appellant contends
Hallerbach’s change options are not comprised by the base process (as
required by base claim 1) and therefore cannot teach the claimed restriction.
Br. 27–28.
We are unpersuaded. As discussed for claim 1, the Examiner finds
Hallerbach’s process context teaches the claimed restriction. Final 14; see
also id. at 42 (claim 18). As further discussed, Hallerbach teaches a base
process as having a process context that determines the applicable change
operations. Hallerbach 237–39. The process context also determines the
applicable options, which are set sequences of change operations (and thus
define an order of aggregating adaptations, as claimed). Id. at 246–47.
Claim 18 depends from claim 1 and adds that “the . . . restriction . . .
defines which model element[s] of the base model are allowed to be
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adapted.” The Examiner finds Baeuerle’s “flexible” blocks teach or suggest
adding the claimed restriction to a base process. Ans. 12–13 (citing
Baeuerle ¶ 6). Appellant contends “Baeuerle does not disclose that the
graphical notations for task selection constraints are comprised in a base
model.” Br. 28.
We are unpersuaded. Baeuerle teaches the flexible blocks as part of a
base process inasmuch stating the flexible blocks allow for a “partially
defined model” whereby a “full specification of the model is done just
before or during runtime and may be unique to each instance,” i.e., “instead
of representing . . . workflow control through a . . . model that attempts to
capture every step.” Baeuerle ¶ 4. Baeuerle thereby teaches or suggests
adding the claimed restriction—an identification of what base model
elements can be modified (i.e., are flexible)—to a base model.
Claim 19 depends from claim 1 and adds that “the . . . restriction . . .
restricts permission . . . to apply the selected adaptation layer(s) on the base
model.” The Examiner finds Prigge’s modeling environment teaches or
suggests adding the claimed restriction to Hallerbach’s base process. Ans.
13–14 (citing Prigge ¶ 36). Appellant contends “Prigge says nothing
regarding the features . . . being included in a base model.” Br. 29.
We are unpersuaded. Prigge provides access to models at respective
“virtual collaboration rooms [that] allow developers to work together
efficiently . . . while enforcing security requirements.” Prigge ¶ 36. Prigge
thereby teaches to define permissions for adapting a model and, moreover,
teaches to do so on a model-by-model basis. Prigge also thereby suggests to
identify those permissions in a model, which would naturally be the base
model that is adapted to form a final model.
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Claim 23 depends from claim 1 and adds “a restriction defining a
portion of a process of the base model that cannot be modified by the
selected plurality of adaptation layers.” The only difference between
claim 23 and claim 18 (addressed above) is that claim 23 restricts what
portions/elements of the base model cannot be modified and claim 18
restricts what portions/elements of the base model can be modified. As
discussed, Baeuerle teaches or suggests adding claim 18’s restriction to a
base model. Because identifications of what can (claim 18) and cannot
(claim 23) be modified are obvious ‘sides of the same coin,’ Baeuerle
likewise teaches or suggests adding claim 23’s restriction to a base model.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”); see
also Manual of Patent Examining Procedure § 2144.04.VI.A (Legal
Precedent as Source of Supporting [Obviousness] Rationale—Reversal of
Parts) (Rev. 08.2017, Jan. 2018).
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 17–19 and 23 under 35 U.S.C. § 103.
CONCLUSION
Claim(s)
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–12, 14–24 101 Eligibility 1–12, 14–24
1–12, 14–24 103 Hallerbach,
Baeuerle, Prigge
1–12, 14–24
Overall
Outcome
1–12, 14–24

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DECISION
We affirm the rejections of claims 1–12 and 14–24.
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).
AFFIRMED

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APPENDIX A

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APPENDIX B