Malyshev, Stanislav et al.

Patent Trials and Appeals Board

Jun 11, 2020

14554329 - (D) (P.T.A.B. Jun. 11, 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.
14/554,329 11/26/2014 Stanislav Malyshev 1301-052U 8284
112025 7590 06/11/2020
Shutts & Bowen LLP
Steven M. Greenberg, Esq.
525 Okeechobee Blvd
# 1100
West Palm Beach, FL 33401
EXAMINER
HUYNH, THU V
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
06/11/2020 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):
docketing@crgolaw.com
patents@shutts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STANISLAV MALYSHEV, ZAC SPRACKETT, JELLE VINK,
PAUL HUANG, and ARTEM VYSOTSKY
____________

Appeal 2019-000273
Application 14/554,329
Technology Center 2100
____________

Before JOSEPH L. DIXON, SCOTT B. HOWARD, and
STEPHEN E. BELISLE, Administrative Patent Judges.

BELISLE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–18. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies the
real party in interest as SugarCRM, Inc. Appeal Br. 2.
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STATEMENT OF THE CASE
The Claimed Invention
Appellant’s invention relates generally to “[computer program]
upgrade feasibility and reporting,” and particularly to upgrade feasibility and
reporting concerning “customized instance[s] of the computer program.”
Spec. ¶ 16.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method for application upgrade feasibility and
reporting, the method comprising:
generating in memory of a computing system a
deployment characterization of a customized instance of a
computer program designated to receive an upgrade;
comparing the deployment characterization to a selection
of known characterizations of deployment of different
customized instances of the computer program, each of the
known characterizations of deployment of different customized
instances of the computer program having an association with an
upgrade feasibility predictor for the upgrade;
identifying a matching one of the known characterizations
for the generated deployment characterization; and,
displaying a report on a display of the computing system
including an upgrade feasibility predictor corresponding to the
matching one of the known characterization.
Appeal Br. 26 (Claims App.).
The Applied References
The Examiner relies on the following references as evidence of
unpatentability of the claims on appeal:
Nakagawa US 5,835,911 Nov. 10, 1998
Mishra US 7,127,707 B1 Oct. 24, 2006
Margulis US 7,421,716 B1 Sept. 2, 2008
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Winkler US 2012/0174058 A1 July 5, 2012
The Examiner’s Rejections
The Examiner made the following rejections of the claims on appeal:
Claims 1–18 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2–3.
Claims 1–3, 5, 7–9, 11, 13–15, and 17 stand rejected under 35 U.S.C.
§ 102(a)(l) as anticipated by Nakagawa. Final Act. 3–6.
Claims 4, 10, and 16 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Nakagawa, Winkler, and Margulis.
Final Act. 6–7.
Claims 6, 12, and 18 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Nakagawa and Mishra. Final Act. 7–
8.
ANALYSIS2
Section 101 Analysis
Appellant disputes the Examiner’s conclusion that claims 1–18 are
directed to patent-ineligible subject matter. Appeal Br. 5–15; Reply Br. 2–5.
Appellant argues these pending claims as a group. See Appeal Br. 15
(arguing together “claim 1, its counterpart independent claims and the
respective dependencies”). Thus, for purposes of our analysis, we select
independent claim 1 as the representative claim, and any claim not argued

2 Throughout this Decision, we have considered Appellant’s Appeal Brief
filed April 19, 2018 (“Appeal Br.”); Appellant’s Reply Brief filed
October 10, 2018 (“Reply Br.”); the Examiner’s Answer mailed August 10,
2018 (“Ans.”); the Final Office Action mailed October 19, 2017 (“Final
Act.”); and Appellant’s Specification filed November 26, 2014 (“Spec.”).
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separately will stand or fall with our analysis of the rejection of claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues the Examiner overgeneralized the claims,
mischaracterized the alleged abstract idea, and failed to consider the recited
limitations in determining whether the claims are patent eligible. Appeal
Br. 5–10. In addition, Appellant asserts the claims use the alleged abstract
idea in conjunction with a particular solution and provide an improvement to
a technical field. Appeal Br. 10–15. Further, Appellant challenges the
Examiner’s findings that the claims recite computer functions that are well-
understood, routine, and conventional. Appeal Br. 12–16; Reply Br. 2–5.
In the Answer, the Examiner maintains and further clarifies the Section 101
rejection. See Ans. 9–11.
“Whether a patent claim is drawn to patent-eligible subject matter is
an issue of law that is reviewed de novo.” SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010).
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 217 (2014). In addition, the Office recently published revised
guidance for evaluating subject matter eligibility under 35 U.S.C. § 101,
specifically with respect to applying the Alice framework. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Office Guidance”). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this
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inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016). Per Office Guidance, this first inquiry has two
prongs of analysis (i) does the claim recite a judicial exception (e.g., an
abstract idea), and (ii) if so, is the judicial exception integrated into a
practical application. 84 Fed. Reg. at 54. Under the Office Guidance, if the
judicial exception is integrated into a practical application, see infra, the
claim is patent eligible under § 101. 84 Fed. Reg. at 54–55. If the claim is
directed to a judicial exception (i.e., recites a judicial exception and does not
integrate the exception into a practical application), the next step is to
determine whether any element, or combination of elements, amounts to
significantly more than the judicial exception. Alice, 573 U.S. at 217;
84 Fed. Reg. at 56.
In this case, we conclude Appellant’s independent claim 1 recites an
abstract idea because it recites mental processes. If a claim, under its
broadest reasonable interpretation, 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. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer-
implemented steps, there is nothing in the claims themselves that foreclose
them from being performed by a human, mentally or with pen and paper.”);
see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372
(Fed. Cir. 2011) (holding that the incidental use of a “computer” or
“computer readable medium” does not make a claim otherwise directed to a
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process that “can be performed in the human mind, or by a human using a
pen and paper” patent eligible); Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 71 (2012) (explaining mental processes are not
patentable); Office Guidance, 84 Fed. Reg. at 52–53 nn.14–15.
More specifically, Appellant’s claims are generally directed to
reporting computer program upgrade feasibility. This is consistent with how
Appellant describes the claimed invention. See Spec. ¶¶ 7 (describing the
disclosed embodiments as systems and methods for “application upgrade
feasibility and reporting”), 16 (“Embodiments of the invention provide for
application upgrade feasibility and reporting.”), Abstract; see also Appeal
Br. 8 (“Appellant[’s] claims pertain to the concept of ‘application upgrade
feasibility and reporting’.” (emphasis added)), 13 (arguing independent
claim 1 “achieve[s] the claimed concept of application upgrade feasibility
and reporting”), 18 (“[A]s claimed, it is a comparison of different
characterizations of different instances of the same computer program.”
(citation omitted)). But for the recitation of a computing system memory
and display, which we find to be generic computer components performing
generic computing functions (as discussed further below; see also, e.g.,
Spec. ¶¶ 27–33), reporting computer program upgrade feasibility is a series
of observations, evaluations, judgments, and opinions that can be performed
by a human, mentally or with pen and paper. See, e.g., Spec. ¶ 20 (“Each
predictor can be assigned statically by an administrator.”).
Consistent with our Office Guidance and case law, we conclude
reporting computer program upgrade feasibility is a mental process and,
thus, an abstract idea. See Office Guidance, 84 Fed. Reg. at 52; see also
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n,
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776 F.3d 1343, 1347–48 (Fed. Cir. 2014) (explaining that claims drawn to
data collection, recognition, and storage are “undisputedly well-known” and,
absent more, are directed to an abstract idea); Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (concluding that
“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”); FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (concluding claims directed to
“collecting and analyzing information to detect misuse and notifying a user
when misuse is detected” to be mental processes within the abstract-idea
category); CyberSource, 654 F.3d at 1371–72 (concluding claims directed to
“detecting credit card fraud based on information relating [to] past
transactions” can be performed in the human mind and were drawn to a
patent-ineligible mental process).
Claim 1 is reproduced below and includes the following claim
limitations that recite reporting computer program upgrade feasibility,
emphasized in italics:
1. A method for application upgrade feasibility and
reporting, the method comprising:
generating in memory of a computing system a
deployment characterization of a customized instance of a
computer program designated to receive an upgrade;
comparing the deployment characterization to a selection
of known characterizations of deployment of different customized
instances of the computer program, each of the known
characterizations of deployment of different customized
instances of the computer program having an association with
an upgrade feasibility predictor for the upgrade;
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identifying a matching one of the known characterizations
for the generated deployment characterization; and,
displaying a report on a display of the computing system
including an upgrade feasibility predictor corresponding to the
matching one of the known characterization.
Appeal Br. 26 (Claims App.) (emphases added).
More particularly, reporting computer program upgrade feasibility
comprises (i) collecting data to be analyzed (i.e., the claimed step of
“generating” data, namely a deployment characterization of a customized
instance of a computer program designated to receive an upgrade); and
(ii) performing at least one operation on the collected data (i.e., the claimed
step of “comparing” data, namely the deployment characterization, to other
data, namely a selection of known characterizations of deployment of
different customized instances of the computer program, where that data has
“an association” with more data, namely an upgrade feasibility predictor for
the upgrade; and the claimed step of “identifying” matching data, namely
matching one of the known characterizations for the generated deployment
characterization).
Because the claim recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
application. Office Guidance, 84 Fed. Reg. at 54. To determine whether the
judicial exception is integrated into a practical application, we identify
whether there are “any additional elements recited in the claim beyond the
judicial exception(s)” and evaluate those elements to determine whether they
integrate the judicial exception into a recognized practical application.
Office Guidance, 84 Fed. Reg. at 54–55 (emphasis added); see also MPEP
§ 2106.05(a)–(c), (e)–(h).
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In this case, we find the additional limitation(s) do not integrate the
judicial exception into a practical application. More particularly, contrary to
Appellant’s assertions (see Appeal Br. 10–15), the claims do not recite (i) an
improvement to the functionality of a computer or other technology or
technical field (see MPEP § 2106.05(a)); (ii) a “particular machine” to apply
or use the judicial exception (see MPEP § 2106.05(b)); (iii) a particular
transformation of an article to a different thing or state (see MPEP
§ 2106.05(c)); or (iv) any other meaningful limitation (see MPEP
§ 2106.05(e)). See 84 Fed. Reg. at 55.
Specifically, the additional limitation(s) merely describe using a
computing system memory for “generating” or gathering data; and
“displaying” data on a computing system display, where the displayed data
is a “report” including an upgrade feasibility predictor. These steps are
extra-solution activity of data gathering and displaying steps, which do not
confer patent eligibility. See, e.g., Elec. Power, 830 F.3d at 1355
(explaining that “selecting information, by content or source, for collection,
analysis, and display does nothing significant to differentiate a process from
ordinary mental processes”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co.
of Can., 771 F. Supp. 2d 1054, 1066 (E.D. Mo. 2011), aff’d, 687 F.3d 1266
(Fed. Cir. 2012) (explaining that “storing, retrieving, and providing data . . .
are inconsequential data gathering and insignificant post solution activity”).
Further, the additional elements recited in independent claim 1 (e.g., a
computing system environment using memory and a display) fail to convert
the judicial exception into a patent-eligible application. See Alice, 573 U.S.
at 223 (“Stating an abstract idea ‘while adding the words “apply it”’ is not
enough for patent eligibility.”).
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Contrary to Appellant’s assertions (see, e.g., Appeal Br. 10–15),
independent claim 1 does not recite an improvement to the functionality of a
computer or other technology or technical field. See MPEP § 2106.05(a).
As the court in Enfish explained, “the first step in the Alice inquiry . . . asks
whether the focus of the claims is on the specific asserted improvement in
computer capabilities . . . or, instead, on a process that qualifies as an
‘abstract idea’ for which computers are invoked merely as a tool.” Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016).
Although Appellant repeatedly characterizes the claimed invention as
providing an “improvement to computer-related technology” (see, e.g.,
Appeal Br. 11 (emphases omitted)), Appellant does not sufficiently identify
the specific technological computer “problem” being solved or the specific
technological computer “improvement.” See Appeal Br. 10–15. Indeed,
claim 1 uses “a computing system” to perform four steps—generate data in
memory, compare data, identify matches in data, and display reports of data
on a display—without further limitation acting to improve upon such
method steps.
Appellant argues that the recitation in claim 1 of a “customized”
instance of a computer program, as opposed to any other instance of a
computer program, allegedly improves the claimed process for reporting
computer program upgrade feasibility (Appeal Br. 11–12); however, the
“customized” instance of a computer program in claim 1 relates merely to
the data being generated, compared, identified, and displayed, and does not
improve a computer, technology, or a technical field. See McRO, Inc. v.
Bandai Namco Games Am., Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016)
(“We . . . look to whether the claims in these patents focus on a specific
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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.” (citing Enfish, 822 F.3d at 1336)). Here,
unlike in McRO and Enfish, we find the invention of claim 1 merely uses
computer devices as tools, rather than improving upon those tools.
For at least the foregoing reasons, independent claim 1 does not
integrate the judicial exception into a practical application.
Because we determine the invention of independent claim 1 is
directed to an abstract idea or combination of abstract ideas, we analyze the
claim under step two of Alice (i.e., step 2B of the Office Guidance) to
determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to “significantly more” than
the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 72–
73, 77–79). As stated in the Office Guidance, many of the considerations to
determine whether the claims amount to “significantly more” under step two
of the Alice framework are already considered as part of determining
whether the judicial exception has been integrated into a practical
application. 84 Fed. Reg. at 56. Thus, at this point of our analysis, we
determine if the claims add a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
field, or simply append well-understood, routine, conventional activities at a
high level of generality. 84 Fed. Reg. at 56. “Whether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination.” Berkheimer v. HP, Inc., 881 F.3d 1360,
1369 (Fed. Cir. 2018).
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In this case, Appellant’s claim 1 does not recite specific limitations
(alone or when considered as an ordered combination) that are not well-
understood, routine, and conventional. Instead, when describing its system
for reporting computer program upgrade feasibility, Appellant describes the
system and components at a high level of generality and notes that the
system may be provided by one or “any suitable combination” of many
various computer readable storage devices (Spec. ¶¶ 27–28); by many
various networking components, like “the Internet, a local area network, a
wide area network and/or a wireless network” (Spec. ¶ 29); and by many
various “computer readable program instructions [that] may be provided to a
processor of a general purpose computer, special purpose computer, or other
programmable data processing apparatus to produce a machine”
(Spec. ¶ 32). See also Spec. Figs. 1–2 (showing system at a high level of
generality). As the Examiner finds (see Final Act. 2–3 (citing case law);
Ans. 10–11), the recited components and functions, such as generating,
comparing, and displaying data, as well as comparing deployment
characterizations to known characterizations, are “basic function[s],” i.e.,
well-understood, routine, and conventional features. Consistent with the
Berkheimer Memorandum,3 we agree with the Examiner’s findings that the

3 On April 19, 2018, the Deputy Commissioner for Patent Examination
Policy issued a memorandum entitled: Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (i.e., “the Berkheimer Memorandum”)
(discussing the Berkheimer decision) (available at https://www.uspto.gov/
sites/default/files/documents/memo-berkheimer-20180419.PDF). Support
for a finding that an element was well-understood, routine, or conventional
may be shown by citation to one or more court decisions noting the well-
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claims merely recite generic computer components (e.g., a computing device
comprising a processor and memory) performing generic computing
functions that are well-understood, routine, and conventional (e.g., receiving
or generating data, processing and comparing data, and presenting the results
of the data processing). See Mortg. Grader, Inc. v. First Choice Loan Servs.
Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (generic computer
components, such as an “interface,” “network,” and “database,” fail to
satisfy the inventive concept requirement); Alice, 573 U.S. at 226 (“Nearly
every computer will include a ‘communications controller’ and [a] ‘data
storage unit’ capable of performing the basic calculation, storage, and
transmission functions required by the method claims.”); 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.”).
Furthermore, contrary to Appellant’s conclusory assertions (see, e.g.,
Appeal Br. 10–15), we find no additional limitations in independent claim 1
that amount to “significantly more” than the abstract idea. For example, in
claim 1, there is no additional limitation that informs “how” the “generating”
step “generat[es] . . . a deployment characterization of a customized instance
of a computer program designated to receive an upgrade,” or informs “how”
generating data such as a characterization for a “customized” instance of a
computer program requires significantly more than generating data for any
other instance of a computer program. The same holds true for claim 1’s

understood, routine, conventional nature of the element(s). See Berkheimer
Memorandum 3–4.
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“comparing,” “identifying,” and “displaying” steps (alone or when
considered as an ordered combination).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 1 under 35 U.S.C. § 101. Further, we sustain the Examiner’s rejection
under 35 U.S.C. § 101 of claims 2–18, which were not argued separately.
See 37 C.F.R. § 41.37(c)(1)(iv).

Section 102 – Anticipation
Appellant disputes the Examiner’s findings that Nakagawa anticipates
claims 1–3, 5, 7–9, 11, 13–15, and 17. Appeal Br. 16–23; Reply Br. 6–8.
Appellant argues these appealed claims as a group. See Appeal Br. 16–23.
Thus, for purposes of our analysis, we select independent claim 1 as the
representative claim, and any claim not argued separately will stand or fall
with our analysis of the rejection of claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv). We turn to the teachings of Nakagawa.
Nakagawa relates generally to “a software distribution and
maintenance system and method with which a software vendor can provide a
number of users with software over a network, and update and maintain the
software at requests of the users.” Nakagawa 1:12–18. Nakagawa explains
that “[s]oftware vendors and server programs in vendor computers should
properly recognize” “various software environments in user computers,” and
that “variation pertaining to a number of software affects the distribution and
management of the software.” Id. at 4:31–44. According to Nakagawa:
A number of sets of software may be systematically distributed
and maintained via a network connecting many vendors and
users of client/server software. A client program in a user
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computer detects when software subject to maintenance is
activated and transmits an inquiry over the network to the
software vendor’s computer for information on the current
version of the software. The server program compares data in
the inquiry with data relating to the latest version of the software
and returns update instruction information and updated software
if appropriate. The client program automatically updates the
software to the latest version according to the update instruction
information when it is received.
Id., Abstract.
Nakagawa discloses its system addresses “configurations and versions
of an object software” (id. at 13:32–34 (emphases added)), and explains:
Since a single set of software Si has a number of version types
depending on the type of computer, the specification of functions,
etc., the version types are specified by respective characters such
as Si.V, Si.V’, Si.V”, etc. Furthermore, each version type is
qualified with a version number for management of update order.
For example, Si.V.1 indicates the version type and number of a
set of software. The set of version type and number are referred
to as a version for short.
Id. at 13:35–57 (emphases added). “When users adopt object software Si,
they normally desire to select the optimum version type Si.V from among a
number of version types and then use the latest version Si.V.1 in the selected
type.” Id. at 13:58–61 (emphases added). Nakagawa also discloses “[t]he
object software Si is supplied by a vendor (Vk) and managed in the software
library SLi which stores software of all versions . . . of all version types.”
Id. at 13:45–49. In updating software, Nakagawa discloses “the server
program SP compares the [software configuration] information with the
configuration of the software library SL, and returns the instruction
information for updating software Si of user A together with the updated
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software.” Id. at 29:65–30:5; see also id. at 29:13–55 (explaining that
software versions comprise variously selected modules).
To serve as an anticipatory reference, “the reference must disclose
each and every element of the claimed invention, whether it does so
explicitly or inherently.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)
(citation omitted). The Examiner finds Nakagawa anticipates claim 1, and
as relevant here, the limitation of “comparing the deployment
characterization to a selection of known characterizations of deployment of
different customized instances of the computer program, each of the known
characterizations of deployment of different customized instances of the
computer program having an association with an upgrade feasibility
predictor for the upgrade” (hereinafter “Comparing Limitation”). Ans. 12–
13. In particular, the Examiner acknowledges Appellant’s proffered claim
construction for “customize,” namely “to build, fit, or alter according to
individual specifications” (Appeal Br. 21–22; see Ans. 13), and finds:
Nakagawa teaches . . . comparing the current configuration to a
selection of latest version’s configurations of different versions
of the software stored in a library, each of the configurations of
different versions of the software having an association with an
upgrade feasibility predictor, such as update, added functions,
added modules. . . . Nakagawa teaches different versions of a
software are stored in [a] vendor computer’s library, wherein
each of [the] different versions compris[es] different modules to
build, fit[,] or alter according to each of [the] different versjons
of the software. Therefore, each of different versions of the
software is interpreted as a customized instance of a computer
program.
Ans. 12–13 (emphases added; citations omitted).
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Appellant argues that “customized” in the Comparing Limitation
renders claim 1 patentable over Nakagawa. Appeal Br. 17; Reply Br. 6.
In particular, Appellant argues:
Nakagawa refers to a comparison of a known required
configuration of a target to an actual configuration of a target.
However, Appellant’s claims require more. Appellant is
specifically solving the problem of application upgrade
feasibility and reporting regarding customized instances of a
computer program. Appellant’s invention would be rendered
inoperable if Appellant’s invention were to employ the
disclosure of Nakagawa as “the indiscriminate upgrading of a
customized deployment of a computer program oftentimes can
“break” the deployment resulting in a costly rolling back of the
upgrade.”
Appeal Br. 20. We find Appellant’s arguments unpersuasive of Examiner
error for at least the following reasons (and those set forth by the Examiner
as discussed above).
First, Appellant hinges patentability here on the presence of the term
“customized” in characterizing the “computer program” in method claim 1.
But claim 1 recites “customized” without any additional context, such as, for
example, customized “by whom,” “when,” or “relative to what.” Even
accepting Appellant’s definition of “customize” as “to build, fit, or alter
according to individual specifications” (see supra), we find Appellant does
not show persuasively that “a customized instance of a computer program”
as recited in claim 1 excludes “alter[ed]” or different versions of computer
programs, as found by the Examiner (Ans. 12–13). See, e.g., E-Pass Techs.,
Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (Claims must be
interpreted “‘in view of the specification’ without unnecessarily importing
limitations from the specification into the claims.” (citing Texas Digital Sys.,
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Inc. v. Telegenix, Inc., 308 F.3d 1193, 1203–04 (Fed. Cir. 2002))); Reply
Br. 7–8.
Second, claim 1 is a method claim with four steps, namely generating,
comparing, identifying, and displaying certain data. Appellant does not
show persuasively how “customized,” as recited, for example, in the
Comparing Limitation, is functionally related to the “comparing” step (or to
the “generating” step). Indeed, Appellant does not show persuasively how
any characteristic of “comparing” or “generating” as recited in claim 1 is
changed by a “customized” computer program versus, for example, an
altered or different computer program. As a general proposition, we need
not give patentable weight to non-functional descriptive material absent a
new and nonobvious functional relationship between the descriptive material
and the substrate. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see
also King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir.
2010); Manual of Patent Examining Procedure (MPEP) § 2111.05 (9th ed.
Rev. 08.2017, Jan. 2018). In Ex parte Nehls, 88 USPQ2d 1883, 1888 (BPAI
2008) (precedential), the Board held that the nature of the information being
manipulated by the computer should not be given patentable weight absent
evidence that the information is functionally related to the process “by
changing the efficiency or accuracy or any other characteristic” of the steps.
See also Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (holding
“wellness-related” data stored in a database and communicated over a
network was non-functional descriptive material as claimed because the data
“does not functionally change” the system).
Third, although Appellant argues “Nakagawa refers to a comparison
of a known required configuration of a target to an actual configuration of a
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target” and submits “Appellant’s claims require more” (Appeal Br. 20; see
Reply Br. 7), Appellant does not show persuasively how so. For example,
Appellant does not sufficiently explain why an “actual” configuration of a
computer program excludes “customized,” “altered,” or “different”
configurations of a computer program. Moreover, claim 1 does compare a
deployment characterization of a “customized” (or “actual”) instance of a
computer program to “known” configurations, and “match[es]” the
“customized” configuration to such “known” configurations. Given this
comparison and matching to “known” configurations, we find Appellant
does not show persuasively why a “customized” configuration as recited in
claim 1 excludes “known” configurations (i.e., if A matches to B, and B is
known, then A is known).
Fourth, Appellant’s argument (Appeal Br. 20) that its invention would
be rendered inoperable if it employed the disclosure of Nakagawa lacks
merit. Appellant argues “the indiscriminate upgrading of a customized
deployment of a computer program oftentimes can ‘break’ the deployment
resulting in a costly rolling back of the upgrade” (Appeal Br. 20), but the
invention recited in method claim 1 does not perform any upgrading (only
generating, comparing, identifying, and displaying certain data). See Vas–
Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“The
invention is . . . whatever is now claimed.”).
Finally, in Appellant’s Reply Brief, Appellant belatedly asserts:
Appellant[’s] upgrade feasibility predictors associated with
customized instances of a computer program, as defined in the
Appellant[’s] originally filed specification, are not the same as
Nakagawa’s single determination of whether a known update is
required for a known version of an application.
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Reply Br. 8. This argument (which Appellant asserts the Examiner allegedly
“fail[ed] to address” (id.)) was not made in the Appeal Brief, but could have
been, and is not responsive to any new evidence or finding set forth by the
Examiner in the Answer. In the absence of a showing of good cause by
Appellant, these arguments are untimely and deemed waived.
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in the
[E]xaminer’s answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the
present appeal, unless good cause is shown.
37 C.F.R. § 41.41(b)(2); see also Ex parte Nakashima, 93 USPQ2d 1834,
1837 (BPAI 2010) (informative) (explaining that arguments and evidence
not presented timely in the principal brief will not be considered when filed
in a reply brief, absent a showing of good cause explaining why the
argument could not have been presented in the principal brief); Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply
brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner’s rejections, but were
not.”).
Notwithstanding the tardiness of such argument, we do not find it
persuasive. The Examiner finds “each of the configurations of different
versions of the software hav[e] an association with an upgrade feasibility
predictor, such as update, added functions, added modules.” Ans. 12 (citing
Nakagawa, col. 29, lines 13–36); see Final Act. 3–4. Other than mere
conclusory attorney argument asserting the Comparing Limitation “is
lacking in Nakagawa” (Appeal Br. 17) and is “not the same as” Nakagawa
(Reply Br. 8 (belated argument quoted above)), Appellant does not
substantively evidence error in the Examiner’s finding here. It is well settled
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that mere attorney arguments and conclusory statements, which are
unsupported by factual evidence, are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence).
Based on the foregoing, we find Appellant does not show persuasively
that the Examiner erred in finding independent claim 1 anticipated by
Nakagawa.
Accordingly, we sustain the Examiner’s rejection under 35 U.S.C.
§ 102(a)(l) of independent claim 1. For similar reasons, we sustain the
Examiner’s rejection under 35 U.S.C. § 102(a)(l) of independent claims 7
and 13, and claims 2, 3, 5, 8, 9, 11, 14, 15, and 17 which depend therefrom,
none of which were argued separately. See 37 C.F.R. § 41.37(c)(1)(iv).

Section 103 – Obviousness
Appellant disputes the Examiner’s findings that the combination of
Nakagawa, Winkler, and Margulis renders obvious claims 4, 10, and 16, and
that the combination of Nakagawa and Mishra renders obvious claims 6, 12,
and 18. Appeal Br. 23–25. Appellant argues these dependent claims as a
group, and relies upon the arguments for patentability of independent
claim 1 (see Appeal Br. 23–25), which we find unpersuasive as discussed
above.
Appellant submits no other argument in the Appeal Brief as to the
non-obviousness of these dependent claims, but for its conclusory assertion
that “the Examiner fails to provide any rationale or reasoning as to why one
would combine the cited references and why those support a conclusion of
obviousness.” Appeal Br. 24. To support the legal conclusion of
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obviousness, “there must be some articulated reasoning with some rational
underpinning” for combining elements in the manner claimed. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)). Additionally, “[m]otivation to combine may be
found in many different places and forms.” Allergan, Inc. v. Sandoz Inc.,
726 F.3d 1286, 1292 (Fed. Cir. 2013); see also Alza Corp. v. Mylan Labs.,
Inc., 464 F.3d 1286, 1294 (Fed. Cir. 2006) (stating that the motivation to
combine does not have to be explicitly stated in the prior art).
Contrary to Appellant’s assertion, (1) in the Final Action as to claims
4, 10, and 16, the Examiner identifies additional teachings in Winkler and
Margulis, and finds it would have been obvious “to have combined
Windkler’s [sic] teaching and Nakagawa’s teaching to include modified
components in the composite application, since the combination would have
allowed the user to modify components in the composite application as
Windkler disclosed,” and “to have combined Margulis’ teaching and
Nakagawa’s teaching to include components that have been modified from a
default form of the components, since the combination would have
facilitate[d] the redeploying when a component is changed/modified as
Margulis disclosed” (Final Act. 6–7 (emphases added)); and (2) in the Final
Action as to claims 6, 12, and 18, the Examiner identifies additional
teachings in Mishra, and finds it would have been obvious “to have
combined Mishra’s teaching and Nakagawa’s teaching to include a
hyperlinked reference to crowd-sourced documentation . . . , since the
combination would have provided guidance resources/help[] associated
with upgrade issues as Mishra disclosed” (Final Act. 8 (emphases added)).
The Examiner essentially repeats these findings in the Answer. See
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Ans. 14–15. In view of the foregoing, Appellant’s mere assertion that the
Examiner “fails to provide any rationale or reasoning” for the obviousness
rejections at issue lacks merit and is unpersuasive of Examiner error.
Appellant chose not to address these findings by the Examiner in its Appeal
Brief, so we deem any argument as to these findings in its Reply Brief to be
waived. See 37 C.F.R. § 41.41(b)(2) (discussed above).
Based on the foregoing, we find Appellant does not show persuasively
that the Examiner erred in concluding claims 4, 10, and 16 obvious over the
combination of Nakagawa, Winkler, and Margulis, or erred in concluding
claims 6, 12, and 18 obvious over the combination of Nakagawa and Mishra.
Accordingly, we sustain the Examiner’s rejection under 35 U.S.C.
§ 103 of dependent claims 4, 6, 10, 12, 16, and 18, which were argued as a
group. See 37 C.F.R. § 41.37(c)(1)(iv).

DECISION SUMMARY
In summary:
Claim(s)
Rejected 35 U.S.C. § Basis Affirmed Reversed
1–18 101 Eligibility 1–18
1–3, 5, 7–9, 11,
13–15, 17
102(a)(l) Nakagawa 1–3, 5, 7–
9, 11, 13–
15, 17

4, 10, 16 103 Nakagawa,
Winkler,
Margulis
4, 10, 16
6, 12, 18 103 Nakagawa,
Mishra
6, 12, 18
Overall
Outcome
1–18
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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