Ronald Becker. Williams

Patent Trials and Appeals Board

Jul 2, 2020

14148095 - (D) (P.T.A.B. Jul. 2, 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.
14/148,095 01/06/2014 Ronald Becker Williams AUS920130274US1 3044
63400 7590 07/02/2020
IBM CORP. (DHJ)
c/o DAVID H. JUDSON
5960 Berkshire Ln, Floor 6
SUITE 225
DALLAS, TX 75225
EXAMINER
DANG, THANH HA T
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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):
mail@davidjudson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD BECKER WILLIAMS
Appeal 2019-000579
Application 14/148,095
Technology Center 2100
Before JAMES R. HUGHES, JAMES W. DEJMEK, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1–20 are pending, stand rejected, are appealed by Appellant,1
and are the subject of our decision under 35 U.S.C. § 134(a). See Final
Act. 1–2; Appeal Br. 1.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a) (2017). Appellant identifies the real party in interest as
International Business Machines Corp. See Appeal Br. 1.
2 We refer to Appellant’s Specification (“Spec.”), filed Jan. 6, 2014; Appeal
Brief (“Appeal Br.”), filed Feb. 10, 2018; and Reply Brief (“Reply
Br.”), filed Oct. 31, 2018. We also refer to the Examiner’s Final Office
Action (“Final Act.”), mailed Aug. 9, 2017; and Answer (“Ans.”) mailed
Aug. 31, 2018.
Appeal 2019-000579
Application 14/148,095
2
CLAIMED SUBJECT MATTER
The invention, according to Appellant, “relates generally to
management of information technology (IT) systems” (Spec. 1:6–7), and
specifically, to methods of categorizing activity in a computing system
having a database using “a data model [that] extends . . . an entity/resource
association to include a ‘quality’ of that association, where the quality is
defined by an ordered set of relative values/characteristics” (Spec. 4:2–4).
See Spec. 4:2–5:4; Abstract. Claims 1 (reciting a method), 8 (reciting an
apparatus), and 15 (reciting a computer program product in a computer
readable medium), are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of categorizing activity in a computing
system having a database, comprising:
configuring the database according to an entity/resource
data model that is extended to include a quality enumerator;
monitoring an interaction between an entity and a resource
to define an entity/resource association;
at capture of the interaction, annotating the entity/resource
association according to an enumerated set of relative quality
values by associating, as the quality enumerator, a quality to the
entity/resource association, the quality being one of a set of
relative qualities as defined in the enumerated set of relative
quality values, and wherein the quality associated is dependent
on a characteristic of the interaction; and
recording in the database the entity/resource association
together with the quality that has been annotated to provide
improved information storage and retrieval in the computing
system;
wherein at least one of the monitoring, associating and
recording steps is carried out in software executing in a hardware
element.
Appeal Br. 25 (Claims App.).
Appeal 2019-000579
Application 14/148,095
3
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Platt et al. US 8,375,068 B1 Feb. 12, 2013
Brezinski et al. US 8,613,066 B1 Dec. 17, 2013
Nakashima US 2014/0068423 A1 Mar. 06, 2014 (filed
Aug. 06, 2013)
REJECTIONS3, 4
1. The Examiner rejects claims 1–20 under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. See Final Act. 2–3;
Ans. 3–7.
2. The Examiner rejects claims 1–4, 6–11, 13–18, and 20 under
35 U.S.C. § 103 as being unpatentable over Platt and Nakashima. See Final
Act. 4–8.
3. The Examiner rejects claims 5, 12, and 19 under 35 U.S.C.
§ 103 as being unpatentable over Platt, Nakashima, and Brezinski. See Final
Act. 8–9.

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application
has an effective filing date (Jan. 6, 2014) after the AIA’s effective date, this
decision refers to 35 U.S.C. § 103.
4 The Examiner modified the § 101 rejection (see Final Act. 2–3) and
presented a new ground of rejection under § 101 in the Examiner’s Answer
(see Ans. 3–7). The Examiner also withdrew the written-description
rejection under 35 U.S.C. § 112(a) (see Final Act. 3–4) in the Examiner’s
Answer. See Ans. 9. We do not address Appellant’s arguments directed to
the withdrawn rejection. See Appeal Br. 12–14.
Appeal 2019-000579
Application 14/148,095
4
OPINION
Subject Matter Eligibility—35 U.S.C. § 101
Legal Principles
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 77–80 (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, 573 U.S. at 217. The
framework requires us first to consider “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217.
If so, we then examine “the elements of [the] claim both individually and ‘as
an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Alice,
573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). That is, we examine the
claim 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.’” Alice,
573 U.S. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–
73).
Appeal 2019-000579
Application 14/148,095
5
In January 2019, the Patent Office published revised guidance
concerning this framework and the application of § 101. USPTO’s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (hereinafter “2019 Revised Guidance”). Under that guidance, we first
look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people) (hereinafter
“Step 2A, prong 1”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h))
(hereinafter “Step 2A, prong 2”).5
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under 35 U.S.C. § 101. See 2019 Revised Guidance, 84 Fed. Reg.
at 54.
Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate

5 All references to the MPEP are to the Ninth Edition, Revision 08-2017
(rev. Jan. 2018).
Appeal 2019-000579
Application 14/148,095
6
whether the claim provides an inventive concept. See 2019 Revised
Guidance 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18.
For example, we look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.6
See 2019 Revised Guidance, 84 Fed. Reg. at 56. With these principles in
mind, we turn to the merits of the § 101 rejection.
The Examiner’s Conclusions and Appellant’s Arguments
The Examiner rejects Appellant’s claims 1–20 as being directed to
patent-ineligible subject matter. See Final Act. 2–3; Ans. 3–7. Specifically,
the Examiner concludes that the “claimed invention is directed to a judicial
exception (. . . an abstract idea) without significantly more” (Final Act. 2)
because, inter alia, “the additional limitations of claim 1 and similar claims
8 and 15, considered individually and as ordered combination, are not
significantly more than an abstract idea” (Final Act 3). In the Examiner’s
Answer, the Examiner concludes that the claims
are directed to the abstract idea of categorizing activity including
the steps of monitoring an interaction between an entity and a
resource, annotating the entity/resource association, and
recording the entity/resource association. The claims do not
include additional elements that are sufficient to amount to
significantly more than the judicial exception because the
additional computer elements, which are recited at a high level

6 Items (3) and (4) are collectively referred to as “Step 2B” hereinafter and
in the 2019 Revised Guidance.
Appeal 2019-000579
Application 14/148,095
7
of generality, provide conventional computer functions that do
not add meaningful limits to practicing the abstract idea.
. . . .
[And, the] additional elements such as computing system,
apparatus, processor, computer memory, and non-transitory
computer readable medium are component[s] of a generic
computer [that] perform generic functions.
Ans. 3–4.
Appellant contends the Examiner erred in rejecting the claims as
being directed to patent-ineligible subject matter. See Appeal Br. 5–11;
Reply Br. 2–11. Specifically, Appellant contends, inter alia, that the
“[w]hen all of the claim elements in each of these particular operations are
considered, it is evident that [the recited] steps, both individually and
certainly as an ‘ordered combination,’ are neither well-known nor
conventional” and the “Final Rejection does not provide the proper Alice
step two analysis.” Appeal Br. 11. Appellant further contends that the
Examiner’s “rejection as presently phrased does not even state that the
additional claim elements are well-understood, routine or conventional,” and
“the Berkheimer guidelines requires that the Examiner provide explicit proof
of such alleged facts.” Reply Br. 9; see Reply Br. 7–10.
Inventive Concept
We have reviewed Appellant’s claims and contentions in detail and in
light of current precedent and guidance (supra). For the reasons explained
below, Appellant has persuaded us that the Examiner erred regarding Step
2B of the Eligibility Analysis. Because this issue is dispositive, we begin
with Step 2B rather than a detailed claim construction or analysis under the
2019 Revised Guidance Step 2A.
Appeal 2019-000579
Application 14/148,095
8
As directed by our reviewing court, a proper rejection under Step 2B
requires a search for an “‘inventive concept’ sufficient to ‘transform the
nature of the claim into a patent-eligible application.’” McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016)
(quoting Alice, 573 U.S. at 217). Under the second step of the Mayo/Alice
framework, i.e., Step 2B, the Examiner must “look with more specificity at
what the claim elements add, in order to determine ‘whether they identify an
‘inventive concept’ in the application of the ineligible subject matter’ to
which the claim is directed.” Affinity Labs of Tex., LLC v. DIRECTV, LLC,
838 F.3d 1253, 1258 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). An “inventive concept”
requires more than “well-understood, routine, conventional activity already
engaged in” by the relevant industry. Rapid Litig. Mgmt. Ltd. v. CellzDirect,
Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79–
80); see Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l
Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014). The “inventive concept”
“must be significantly more than the abstract idea itself, and cannot simply
be an instruction to implement or apply the abstract idea on a computer.”
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1349 (Fed. Cir. 2016) (citation omitted). But a “non-conventional and
non-generic arrangement of known, conventional pieces” may provide an
“inventive concept” satisfying Mayo/Alice Step 2. Id. at 1350.
“The second step of the Alice test is satisfied when the claim
limitations ‘involve more than performance of []well-understood, routine,
[and] conventional activities previously known to the industry.’”
Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (quoting
Content Extraction, 776 F.3d at 1347–48 and Alice, 573 U.S. at 225).
Appeal 2019-000579
Application 14/148,095
9
“Whether something is well-understood, routine, and conventional to a
skilled artisan at the time of the patent is a factual determination.”
Berkheimer, 881 F.3d at 1369; see 2019 Revised Guidance, 84 Fed. Reg.
at 56.
As previously discussed, the Examiner rejects 1–20 as being directed
to patent-ineligible subject matter (supra), and concludes (with respect to
Step 2B) that independent claim 1 recites additional elements “such as
computing system, apparatus, processor, computer memory, and non-
transitory computer readable medium,” “which are recited at a high level of
generality,” and are generic computer components of that perform generic
functions. Ans. 3–4. The Examiner, however, fails to even mention that the
identified additional elements are well-understood, routine, or conventional.
The Examiner fails to make the requisite findings, much less support such
findings with evidence as required by Berkheimer.
The Examiner’s conclusions with respect to the Step 2B (inventive
concept) analysis are not supported by sufficient evidence and, therefore, are
erroneous. The Examiner’s rejection and response (supra) have not
provided the evidence required by Berkheimer to support the Examiner’s
determinations that the claims do not recite an inventive concept (that the
additional elements are generic—i.e., well-understood, routine, and
conventional). See Berkheimer, 881 F.3d at 1369; 2019 Revised Guidance,
84 Fed. Reg. at 56 n.36.
We agree with Appellant (Reply Br. 9) that the Examiner has not
established a prima facie case. Specifically the Examiner has not provided
Appeal 2019-000579
Application 14/148,095
10
any of the four categories of information required by the USPTO’s guidance
in its Berkheimer Memo:7
1. A citation to an express statement in the specification or to
a statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional
nature of the additional element(s) . . . .
2. A citation to one or more of the court decisions discussed
in MPEP § 2106.05(d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s) . . . .
4. A statement that the examiner is taking official notice of
the well-understood, routine, conventional nature of the
additional element(s) . . . .
Berkheimer Memo at 3–4.
In summary, the Examiner has not provided sufficient persuasive
evidence that Appellant’s claim 1 recites additional elements that are well-
understood, routine, and conventional with respect to Step 2B of the
Alice/Mayo framework in the Revised Guidance. Accordingly, we are
constrained by the record to reverse the Examiner’s rejection of claims 1–20
under 35 U.S.C. § 101 on procedural grounds.
Obviousness Rejections of Claims 1–4, 6–11, 13–18, and 20
The Examiner rejects independent claim 1 (as well as independent
claims 8 and 15, and dependent claims 2–4, 6, 7, 9–11, 13, 14, 16–18, and

7 Memorandum from Robert W. Bahr, entitled “Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.),” dated April 19, 2018
(“Berkheimer Memo”). The Berkheimer Memo is available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (last visited June 19, 2020).
Appeal 2019-000579
Application 14/148,095
11
20) as being obvious over Platt and Nakashima. See Final Act. 4–9; Ans. 9–
13. Appellant contends that Platt and Nakashima do not teach the disputed
limitations of claim 1. See Appeal Br. 14–19; Reply Br. 11–14.
Specifically, Appellant contends, inter alia, that Platt does not configure a
database according to an entity/resource model as required by claim 1—
“Platt does not provide for an entity/resource data model, let alone one that
is extensible (e.g., to include a ‘quality enumerator’) and instead simply
provides a user interface with resource and color codings/rankings that are
displayed” (Reply Br. 12) and, although “Platt teaches a database,” “the
Examiner admits that ‘Platt does not explicitly teach’ extending that
database to include a quality enumerator as the claim requires” (Reply
Br. 11). See Reply Br. 11–12; Appeal Br. 14–16. Appellant further
contends that “Nakashima does not ‘extend’ anything, let alone a model in
general or an entity/resource data model in particular.” Rather, Nakashima
merely describes data objects and “the data object[s] simply ha[ve] a number
of data type attributes, one of which may be ‘enumerated,’” but “the notion
of ‘extending’ a data model is neither disclosed nor suggested.” “[J]ust
because a data type may be ‘enumerated’ . . . in an annotation object list
does not mean that the type is an ‘enumerator’ . . . , let alone a ‘quality
enumerator’ that is the actual phrase used in the claim.” Further, neither
Platt nor Nakashima describe “a set of relative qualities” or “relative quality
values” (emphasis omitted) as required by claim 1. Reply Br. 12; see
Appeal Br. 14–17
We agree with Appellant that the Examiner-cited portions of Platt (see
Platt col. 1, ll. 50–54; col. 4, ll. 25–30; col. 6, ll. 32–35, 38–44; col. 7, ll. 13–
31; col. 15, ll. 23–47; col. 17, ll. 33–35; col. 25, ll. 11–16; Figs. 1A, 1C,
12B) and Nakashima (see Nakashima ¶¶ 53, 59, 60, 73; Figs. 6–7) do not
Appeal 2019-000579
Application 14/148,095
12
teach or suggest the disputed features of Appellant’s claim 1—“configuring
the database according to an entity/resource data model that is extended to
include a quality enumerator” and “at capture of the interaction, annotating
the entity/resource association according to an enumerated set of relative
quality values” (Appeal Br. 25 (Claims App.)). See Appeal Br. 14–19;
Reply Br. 11–14. It is unclear from the Examiner’s rejection if (and how)
Platt teaches a model that configures a database and Nakashima teaches
extending a model to include a quality metric. Further, it is unclear from the
Examiner’s rejection how Platt and Nakashima teach a set of relative quality
values from which the quality metric is associated to the user (entity)
interaction.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding that the combination of Platt and Nakashima
renders obvious Appellant’s claim 1. Independent claims 8 and 15 include
limitations of commensurate scope. Claims 2–4, 6, 7, 9–11, 13, 14, 16–18,
and 20 depend from and stand with their respective base claims.
Obviousness Rejection of Claims 5, 12, and 19
The Examiner rejects dependent claims 5, 12, and 19 under 35 U.S.C.
§ 103 as being obvious over Platt, Nakashima, and Brezinski. See Final
Act. 8–9.
The Examiner does not suggest Brezinski cures the deficiencies of
Platt and Nakashima (supra). Therefore, we reverse the Examiner’s
obviousness rejection of dependent claims 5, 12, and 19 for the same reasons
set forth for claim 1 (supra).
Appeal 2019-000579
Application 14/148,095
13
CONCLUSION
For the reasons discussed above, we find Appellant has shown that the
Examiner erred in rejecting claims 1–20 under 35 U.S.C. §§ 101 and 103.
We, therefore, do not sustain the Examiner’s rejection of claims 1–20.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis 
Affirmed Reversed
1–20 101 Patent-Eligible
Subject Matter
1–20
1–4, 6–11,
13–18, 20
103 Platt, Nakashima 1–4, 6–11,
13–18, 20
5, 12, 19 103 Platt, Nakashima,
Brezinski
5, 12, 19
Overall
Outcome

1–20
REVERSED