Richard M. Haas et al.

Patent Trials and Appeals Board

Oct 9, 2019

14945751 - (D) (P.T.A.B. Oct. 9, 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.
14/945,751 11/19/2015 Richard M. Haas END920150098US1 5888
11445 7590 10/09/2019
IBM Corporation - Endicott Drafting Center
1701 North Street
Building 256-3
Endicott, NY 13760
EXAMINER
WALKER III, GEORGE H
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
10/09/2019 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):
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD M. HAAS, RANDY S. JOHNSON,
TEDRICK N. NORTHWAY, and H. WILLIAM RINCKEL
____________

Appeal 2018-002480
Application 14/945,751
Technology Center 3600
____________

Before NINA L. MEDLOCK, BRUCE T. WIEDER and
ROBERT J. SILVERMAN, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 4–8, 11–15, and 18–20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED INVENTION
Appellant’s claimed invention “relates generally to the field of change
requests, and more particularly to adjusting fulfillment of change requests”
(Spec. ¶ 1).
Claims 1, 8, and 15 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method of [sic] comprising:
[(A)] receiving, by one or more processors, a change
request;
[(B)] identifying, by the one or more processors, a
category of the change request;
[(C)] identifying, by the one or more processors, at least
one available resource with a characteristic that matches a
criterion as dictated by the change request;
[(D)] determining, by the one or more processors, a
technical lead-time for a first available resource of the at least
one available resources, (a) wherein the technical lead-time for
the first available resource is based, at least in part, on both of

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed October 2, 2017) and Reply Brief (“Reply Br.,” filed January 2, 2018),
and the Examiner’s Answer (“Ans.,” mailed November 2, 2017) and Final
Office Action (“Final Act.,” mailed May 9, 2017). Appellant identifies the
real party in interest as International Business Machines Corporation.
Appeal Br. 3.
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(i) one or more previous technical successes of the first available
resource; and (ii) one or more previous technical failures of the
first available resource; and (b) wherein more recent values of
the one or more previous technical successes and the one or more
previous technical failures of the first available resource are
assigned a greater weight than less recent values of the one or
more previous technical successes and the one or more previous
technical failures of the first available resource;
[(E)] determining, by the one or more processors, an
administrative lead-time based, at least in part, on the category
of the change request;
[(F)] generating, by the one or more processors, a total
lead-time for the first available resource based, at least in part,
on the technical lead-time and the administrative lead-time; and
[(G)] in response to a determination that the total lead
time of the first available resource is less than a total lead time of
a second available resource, assigning, by the one or more
processors, the first available resource to the change request.
REJECTION
Claims 1, 4–8, 11–15, and 18–20 are rejected under 35 U.S.C. § 101
as directed to a judicial exception without significantly more.
ANALYSIS
Appellant argues the pending claims as a group (Appeal Br. 11–18).
We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
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The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to “mathematical
relationships/formulas and to assigning a resource to a change request,”
which the Examiner concluded is an abstract idea similar to other concepts
that the courts have held abstract (Final Act. 4–6 (citing Digitech Image
Tech., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) and
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). The
Examiner also determined that the claims do not include additional elements
or a combination of elements sufficient to amount to significantly more than
the abstract idea itself (id. at 7–8).
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After Appellant’s briefs were filed, and the Examiner’s Answer
mailed, the United States Patent and Trademark Office (the “USPTO”)
published revised guidance for use by USPTO personnel in evaluating
subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT
SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019)
(the “2019 Revised Guidance”). That guidance revised the USPTO’s
examination procedure with respect to the first step of the Mayo/Alice
framework by (1) “[p]roviding groupings of subject matter that is considered
an abstract idea”; and (2) clarifying that a claim is not “directed to” a
judicial exception if the judicial exception is integrated into a practical
application of that exception. Id. at 50. The 2019 Revised Guidance, by its
terms, applies to all applications, and to all patents resulting from
applications, filed before, on, or after January 7, 2019. Id.
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
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use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea.
We are not persuaded here that the Examiner erred in determining that
claim 1 is directed to an abstract idea. The Federal Circuit has explained
that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered
in light of the specification, based on whether ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether
the focus of the claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36. Here, the Specification,
including the claim language, makes clear that the claims focus on an
abstract idea, and not on any improvement to computer technology and/or
functionality.
The Specification is entitled “ADJUSTMENT OF CHANGE
REQUESTS,” and states that the “present invention” relates, in particular,
“to adjusting fulfillment of change requests” (Spec. ¶ 1). The Specification
describes, in the Background section, that a “change request is a request to
change a product or service provided to a client,” and may include “changes
to existing features, adding new features, or removing existing features” (id.
¶ 2). Thus, in software development, for example, a user may report bugs or
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desire new functionality from his/her software program, which leads to a
change request; “[t]he software provider then looks into the technical and
economical [sic] feasibility of implementing the requested change, such as
allocating resources to perform the change request” (id.).
The Specification discloses that although solutions to handling change
requests are known, they typically assign the first available resource to
perform the change request without considering other alternatives. As such,
the assignment of the resource may not be optimal (id. ¶ 8).
The claimed invention is ostensibly intended to address this issue and,
thereby, improve on resource assignment by taking into account previous
performances of the resource (id.). The Specification, thus, describes that
“[b]y incorporating successes and failures in previous assignments,
embodiments of the present invention provide assignment of resources with
more efficient lead-times to perform the change request” (id.).
The Specification describes that a “resource” can be any type of
solution that will facilitate or otherwise provide a portion of a
solution/response to a particular type of change request, and may constitute,
inter alia, a particular hardware, software, service, company, or procedure
(id. ¶ 21). Thus, for example, if particular knowledge is needed to complete
a change request, and a particular resource, e.g., a specific company or
individual employee, is known to be knowledgeable then that company
and/or individual employee may be identified among the available resources
(id.; see also id. ¶ 25).
Consistent with this disclosure, claim 1 recites a method comprising:
(1) receiving a change request, i.e., “receiving, by one or more processors, a
change request” and “identifying, by the one or more processors, a category
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of the change request” (steps (A) and (B)); (2) identifying available
resources capable of performing the change request, i.e., “identifying, by the
one or more processors, at least one available resource with a characteristic
that matches a criterion as dictated by the change request” (step (C));
(3) determining a total lead-time for a first available resource to perform the
change request, i.e.,
determining, by the one or more processors, a technical
lead-time for a first available resource of the at least one
available resources, (a) wherein the technical lead-time for the
first available resource is based, at least in part, on both of (i) one
or more previous technical successes of the first available
resource; and (ii) one or more previous technical failures of the
first available resource; and (b) wherein more recent values of
the one or more previous technical successes and the one or more
previous technical failures of the first available resource are
assigned a greater weight than less recent values of the one or
more previous technical successes and the one or more previous
technical failures of the first available resource;
determining, by the one or more processors, an
administrative lead-time based, at least in part, on the category
of the change request; [and]
generating, by the one or more processors, a total lead-
time for the first available resource based, at least in part, on the
technical lead-time and the administrative lead-time
(steps (D), (E), and (F)); and (4) assigning the first available resource to the
change request if its total lead-time is less than the total lead-time of another
available resource, i.e., “in response to a determination that the total lead
time of the first available resource is less than a total lead time of a second
available resource, assigning, by the one or more processors, the first
available resource to the change request” (step (G)).
Simply put, claim 1, given its broadest reasonable interpretation,
recites (1) receiving information, i.e., a change request; (2) analyzing the
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information, i.e., identifying an available resource, e.g., Company “A,”
Employee “B,” having a characteristic that matches a criterion dictated by
the change request and a total lead time that is less than the total lead time of
other available resources; and (3) reporting the results of the collection and
analysis, i.e., assigning the available resource to the change request.
Claim 1, thus, recites a commercial interaction (e.g., entering into an
agreement with Company “A” to perform all or some portion of the change
request) and/or managing personal behavior or relationships or interactions
between people (e.g., assigning Employee “B” to perform the change
request), which is a method of organizing human activity and, therefore, an
abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52. See also
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1344 (Fed. Cir. 2013) (holding that generating tasks to be performed based
on rules is an abstract idea).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong 1), we next consider whether the claim recites
additional elements that integrate the judicial exception into a practical
application (Step 2A, Prong 2). The Examiner determined, and we agree,
that the only additional elements recited in claim 1, beyond the abstract idea,
are the claimed “one or more computer processors” that perform the method
steps (Final Act. 7) — elements that, as the Examiner observed, are
described in the Specification at a high level of generality (id.), i.e., as
generic computer components (see, e.g., Spec. ¶¶ 14, 18).
We find no indication in the Specification, nor does Appellant direct
us to any indication, that the operations recited in claim 1 require any
specialized computer hardware or other inventive computer components,
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i.e., a particular machine, invoke any assertedly inventive programming, or
that the claimed invention is implemented using 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.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the claimed
invention integrates the abstract idea into a “practical application,” as that
phrase is used in the 2019 Revised Guidance.2
Appellant argues that “preemption, or lack thereof, is an important
factor when determining step 2A of the Mayo framework” and that
“claims 1, 4–8, 11–15, and 18–20 do not pre-empt all particular solutions of
the alleged abstract idea” as “evidenced by the novelty and non-obviousness
of the [claimed] subject matter and features” (Appeal Br. 15). Therefore,
according to Appellant, the claims are directed to patent-eligible subject
matter (id.).

2 The 2019 Revised Guidance references the MANUAL OF PATENT
EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)–(c) and (e) in describing
the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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Appellant’s argument is not persuasive at least because preemption is
not the sole test for patent eligibility. Although the Supreme Court has
described “the concern that drives [the exclusion of abstract ideas from
patent-eligible subject matter] as one of pre-emption,” Alice Corp., 573 U.S.
at 216, characterizing preemption as a driving concern for patent eligibility
is not the same as characterizing preemption as the sole test for patent
eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption
may signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility.” Id.
We also are not persuaded that there is any parallel between claim 1
and the claims held patent eligible in McRO, Inc. v. Bandai Namco Games
America, Inc., 837 F.3d 1299 (Fed. Cir. 2016). Appellant asserts that, in
McRO, the Federal Circuit “found a claim directed towards using a set of
rules to generate facial expressions in three-dimensional computer
models . . . to be patent eligible” (Appeal Br. 15). And Appellant argues
that, similar to McRO, the pending claims provide “improvements to
computing performance” (id.).
Citing paragraph 8 of the Specification, Appellant maintains that the
claimed invention provides “better optimized or efficient assignment of
resources than prior solutions, similar to the rules of McRO” (id. at 16). But,
we are not persuaded that the present claims include “rules” that enable the
claimed “one or more processors” to assign resources (with more efficient
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lead-time) to perform a change request in the same way the rules enabled the
computer in McRO to generate computer animated characters. We also find
no evidence of record here that the present situation is like the one in McRO
where computers were unable to make certain subjective determinations, i.e.,
regarding morph weight and phoneme timings, which could only be made
prior to the claimed invention by human animators.
The ’576 patent, at issue in McRO,3 describes that prior to the claimed
invention, character animation and lip synchronization were accomplished
by human animators, with the assistance of a computer, and involved the use
of a so-called “keyframe” approach in which animators set appropriate
parameters, i.e., morph weights, at certain important times, i.e., “keyframes,”
in order to produce accurate and realistic lip synchronization and facial
expressions. McRO, 837 F.3d at 1305. Animators knew what phoneme a
character pronounced at a given time from a time-aligned phonetic
transcription (a “timed transcript”). Id. In accordance with the prior
technique, animators, using a computer, thus, manually determined the
appropriate morph weight sets for each keyframe based on the phoneme
timings in the timed transcript. Id.
In McRO, the improvement in computer animation was realized by
using “rules, rather than artists [i.e., human animators], to set the morph
weights and transitions between phonemes” (id. at 1313), i.e., in McRO, the
invention used “rules to automatically set a keyframe at the correct point to
depict more realistic speech, achieving results similar to those previously
achieved manually by animators.” Id. at 1307. The rules in McRO, thus,

3 U.S. Patent No. 6,307,576.
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allowed the computer to produce accurate and realistic synchronization in
animated characters that previously could only be produced by humans.
We are not persuaded that any comparable situation is presented here.
Instead, it could not be clearer from the Specification that the present
invention is intended to assign those resources to a change request that are
best capable of performing the change request within an expected time, e.g.,
a deadline (see, e.g., Spec. ¶¶ 8, 22). Considered in light of the
Specification, the claimed invention, thus, appears to be focused on
achieving a business objective, i.e., optimizing resource assignment to
change requests, and not on any claimed means for achieving that goal that
improves technology.
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim are no more than generic
components used as tools to perform the recited abstract idea. As such, they
do not integrate the abstract idea into a practical application. See Alice
Corp., 573 U.S. at 223–24 (“[W]holly generic computer implementation is
not generally the sort of ‘additional featur[e]’ that provides any ‘practical
assurance that the process is more than a drafting effort designed to
monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)).
Accordingly, we agree with the Examiner that claim 1 is directed to an
abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
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whether claim 1 adds specific limitations beyond the judicial exception that
are not “well-understood, routine, conventional” in the field, or simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception.
As described above, the only claim elements beyond the abstract idea
are the claimed “one or more processors.” Appellant cannot reasonably
deny, nor does Appellant, that the operation of these components is well-
understood, routine, or conventional, where, as here, there is nothing in the
Specification to indicate that the operations recited in claim 1 require any
specialized hardware or inventive computer components or that the claimed
invention is implemented using other than generic computer components to
perform generic computer functions, e.g., receiving and processing
information. Indeed, the Federal Circuit, in accordance with Alice, has
“repeatedly recognized the absence of a genuine dispute as to eligibility”
where claims have been defended as involving an inventive concept based
“merely on the idea of using existing computers or the Internet to carry out
conventional processes, with no alteration of computer functionality.”
Berkheimer v. HP, Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J.,
concurring) (citations omitted); see also BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1291 (Fed. Cir. 2018) (“BSG Tech does not argue that other,
non-abstract features of the claimed inventions, alone or in combination, are
not well-understood, routine and conventional database structures and
activities. Accordingly, the district court did not err in determining that the
asserted claims lack an inventive concept.”).
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Finally, Appellant misapprehends the controlling precedent to the
extent Appellant maintains that the claims include limitations that are not
“well-understood, routine, and conventional in the field” because the claims
are allegedly novel and non-obvious (Appeal Br. 16–18). Neither a finding
of novelty nor a non-obviousness determination automatically leads to the
conclusion that the claimed subject matter is patent eligible. Although the
second step in the Mayo/Alice framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for “an element or combination of elements
that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’”
Alice Corp., 573 U.S. at 217–18 (citation omitted). “Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). A novel and non-obvious claim directed to a purely
abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90;
see also Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of
any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the § 101 categories of possibly patentable subject matter.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 4–8, 11–15, and 18–
20, which fall with claim 1.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 4–8, 11–
15, 18–20
101 Eligibility 1, 4–8, 11–
15, 18–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED