Shukla, Dharma et al.

Patent Trials and Appeals Board

Jun 10, 2020

12057000 - (D) (P.T.A.B. Jun. 10, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/057,000 03/27/2008 Dharma Shukla 323327-US-NP (M15.069) 1542
148708 7590 06/10/2020
Buckley, Maschoff & Talwalkar LLC
50 Locust Avenue
New Canaan, CT 06840
EXAMINER
HARPER, ELIYAH STONE
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
06/10/2020 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):
microsoft@bmtpatent.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DHARMA SHUKLA, ORI AMIGA,
VIJ VASU, and JUNFENG ZHANG
________________

Appeal 2018-006768
Application 12/057,000
Technology Center 2100
____________

Before JASON V. MORGAN, LINZY T. McCARTNEY, and
MATTHEW J. McNEILL, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1‒3, 6‒13, 15‒19, and 21‒24, which are all the claims
pending in this application. Claims 4, 5, 14, and 20 are canceled. See Appeal
Br. 46‒48. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Microsoft
Technology Licensing, LLC. Appeal Br. 3.
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STATEMENT OF THE CASE
Introduction
Appellant’s application relates to an object system that represents all
objects comprising a computer system in a single hierarchy and according to
a common grammar. Spec. ¶ 6. Claim 1 is illustrative of the appealed subject
matter and reads as follows:
1. A method of representing a computing environment, the
method comprising:
generating an object hierarchy comprising objects
respectively representing an aspect of the computing
environment, respective objects represented according to a
recursable base representation format, at least one object
represented as an unexpanded node, the object hierarchy
comprising:
a first object representing an application binary of
at least one application;
a second object representing an application setting
for at least one application;
a third object representing a user account for at
least one user of the computing environment;
a fourth object representing a security identifier
authenticating an identity of the at least one user; and
a fifth object representing a hardware component
accessible within the computing environment; and
upon receiving a request to expand an unexpanded node,
providing at least one object within the unexpanded node.
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The Examiner’s Rejection2
Claims 1‒3, 6‒13, 15‒19, and 21‒243 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Non-Final
Act. 2‒12.
ANALYSIS
Principles of Law – Section 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.
However, the U.S. 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. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).

2 The Examiner rejected claims 1‒3, 6‒13, and 15‒24 under 35 U.S.C. § 103
as unpatentable over a combination of three prior art references in the
December 29, 2016 Non-Final Office Action from which this appeal is
taken. See Non-Final Act. 7‒13. However, the Examiner withdrew this
rejection in the Answer. See Ans. 4. Accordingly, this rejection is not before
us.
3 The claim listing in the Non-Final Action differs in two respects. First,
claim 20 is listed as rejected under § 101 in the Non-Final Action. See Non-
Final Act. 6. However, Appellant has indicated claim 20 is canceled. See
Appeal Br. 48. Accordingly, this claim is not before us. Second, claim 24 is
not included in the claim listing for the § 101 rejection in the Non-Final
Action. See Non-Final Act. 2. However, the Examiner elsewhere indicates
that claim 24 is commensurate in scope with claim 1 and is rejected for the
same reasons as claim 1. See Non-Final Act. 12. Also, Appellant treats this
claim as rejected for the same rationale as claim 1. See Reply Br. 5, 15.
Thus, the exclusion of claim 24 in the § 101 rejection in the Non-Final
Action is a typographical error, and we treat claim 24 as rejected under the
same rationale as claim 1.
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In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part 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, 67 (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
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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
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 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
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attempt to patent a mathematical formula.”). Having said that, the 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. (citation omitted)
(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 (quotation marks 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. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
Principles of Law – USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).4 “All USPTO personnel are, as a matter of

4 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
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internal agency management, expected to follow the guidance.” Id. at 51; see
also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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 activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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

2019 Update”) (available at https://www.uspto.gov/sites/default/
files/documents/peg_oct_2019_update.pdf).
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance – Section III(A)(2), 84
Fed. Reg. 54–55.
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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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. See 2019 Revised Guidance. Claim 1 recites “[a]
method of representing a computing environment.” Appellant does not argue
the Examiner erred in concluding claim 1 falls within the four statutory
categories of patentable subject matter. We agree with the Examiner’s
conclusion because claim 1 falls within the process category.
Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice, or
mental processes). See 2019 Revised Guidance.
The Examiner concludes claim 1 is directed to the abstract idea of
object creation or representation within a computing environment. Non-Final
Act. 4. The Examiner equates this to the abstract idea of collecting,
displaying, and manipulating data. See Ans. 6‒7.
Appellant argues the Examiner erred because the Examiner did not
identify any abstract idea and did not compare the claims to abstract ideas
identified by courts. See Appeal Br. 24‒26. Appellant also argues the
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Examiner overgeneralized the claims into a gist that does not resemble the
claimed techniques. See Reply Br. 4‒11. Appellant argues the Examiner
refused to acknowledge the technical significance of the claimed subject
matter as discussed in Appellant’s Specification. See id. at 5‒6.
Claim 1 recites “[a] method of representing a computing
environment.” This method includes “generating an object hierarchy
comprising objects respectively representing an aspect of the computing
environment, respective objects represented according to a recursable base
representation format, at least one object represented as an unexpanded
node,” wherein the “object hierarchy” comprises five objects representing
various aspects of the computing environment and the user. The method
further includes “upon receiving a request to expand an unexpanded node,
providing at least one object within the unexpanded node.”
Under the broadest reasonable interpretation, claim 1 recites
generating and presenting a recursable object hierarchy that represents
aspects of a computing environment. We agree with the Examiner that at a
high level, these steps collectively recite object creation or representation
with in a computing environment, which is an example of collecting,
displaying, and manipulating data. See Non-Final Act. 4; Ans. 6‒7. In
particular, “generating an object hierarchy comprising objects respectively
representing an aspect of the computing environment” constitutes collecting
data and evaluating or analyzing that data. The claim further defines what is
represented by the data and providing the data upon request. This collecting,
displaying, and manipulating data may be performed mentally or with the
aid of pen and paper. Our reviewing court has concluded that classifying and
storing data in an organized manner is a well-established “basic concept”
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sufficient to fall under Alice step 1. In re TLI Commc’ns LLC, 823 F.3d 607,
613 (Fed. Cir. 2016).
We conclude that claim 1, therefore, recites concepts performed in the
human mind, which fall within the mental processes category of abstract
ideas identified in the Revised Guidance.
Revised Guidance Step 2A, Prong 2
Under Step 2A, Prong 2 of the Revised Guidance, we next determine
whether the claims recite additional elements that integrate the judicial
exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
The “additional elements” recited in claim 1 include “a computing
environment,” which does not constitute “additional elements that integrate
the exception into a practical application.” See id.
To integrate the exception into a practical application, the additional
claim elements must, for example, improve the functioning of a computer or
any other technology or technical field (see MPEP § 2106.05(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b)), affect
a transformation or reduction of a particular article to a different state or
thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment (see MPEP
§ 2106.05(e)). See also 2019 Revised Guidance.
Appellant argues the Examiner has failed to acknowledge the
technical significance of the claimed subject matter. See Appeal Br. 24‒26;
Reply Br. 4‒11. Appellant argues the claimed subject matter represents a
technical solution to a technical problem and improves the functioning of a
computer. See id.
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Appellant has not persuaded us of Examiner error. In cases involving
software innovations, such as here, the inquiry as to whether the claims are
directed to an abstract idea “often turns on whether the claims focus 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.”’ Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303
(Fed. Cir. 2018) (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335–36 (Fed. Cir. 2016)). The nature of claim 1 as a whole is not to define
a specific technological improvement; instead, claim 1 merely recites the
steps necessary to perform the abstract idea itself. Our reviewing court has
“made clear that mere automation of manual processes using generic
computers does not constitute a patentable improvement in computer
technology.” Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044,
1055 (Fed. Cir. 2017). Like the claims in Credit Acceptance, the focus of
claim 1 is on the abstract idea itself “and the recited generic computer
elements ‘are invoked merely as a tool.’” Id. (citing Enfish, 822 F.3d 1327);
see also Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed.
Cir. 2015) (collecting cases).
The Office Guidance also explains that “mental processes” include
acts that people can perform in their minds or using pen and paper, even if
the claim recites that a generic computer component performs the acts. See
2019 Revised Guidance, 84 Fed. Reg. at 52 n.14 (“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 also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d
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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.”).
Appellant’s argument that claim 1 improves the functioning of a
computer is unpersuasive because it is not commensurate with the scope of
the claims. That is, claim 1 recites a method of generating an object
hierarchy that represents a computing environment. This object hierarchy is
provided upon receiving a request to expand an unexpanded node. However,
this object hierarchy is not used for any practical application or any other
manner that may be said to improve the functioning of a computer. Thus, the
claim “does no more than generally link the use of a judicial exception to a
particular technological environment or field of use.” See 2019 Revised
Guidance, 84 Fed. Reg. at 55. That is, the claim recites a method for
generating and providing data that is related to computers. Although the
Specification describes ways in which this data may be used to improve the
functioning of a computer, such as backup and synchronization services (see
Spec. ¶ 32), claim 1 merely recites the generation of data, not any use of that
data, and this generation may be achieved solely within the human mind.
Mental processes remain unpatentable even when automated to reduce the
burden on the user of what once could have been done with pen and paper.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson[, 409 U.S. 63, 67 (1972)].”). The law is clear that
programming a computer to perform what would otherwise be an abstract
idea is not sufficient to impart patent eligibility. See Alice, 573 U.S. at 224.
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Notably, the only additional element recited in claim 1 is the
“computing environment,” which is merely used to achieve the claimed
results and is not focused on “a specific means or method that improves the
relevant technology.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314 (Fed. Cir. 2016). Appellant’s Specification confirms the
generic, conventional nature of the claimed computing environment. See,
e.g., Spec. ¶¶ 25‒26.
For these reasons, Appellant has not persuaded us of Examiner error
with respect to Step 2A, Prong 2 of the Revised Guidance. We, therefore,
conclude the judicial exception is not integrated into a practical application
under the Revised Guidance.
Revised Guidance Step 2B
Under Step 2B of the Revised Guidance, we next determine whether
the claims recite an “inventive concept” that “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). There must be more than “computer functions [that] are ‘well-
understood, routine, conventional activit[ies]’ previously known to the
industry.” Alice, 573 U.S. at 225 (second alteration in original) (quoting
Mayo, 566 U.S. at 73).
Appellant argues claim 1 recites significantly more than merely
describing and applying the abstract idea and the Examiner did not consider
whether the claims amount to significantly more than an abstract idea. See
Appeal Br. 27‒29; Reply Br. 12‒14. Appellant argues the Examiner does not
identify any additional elements or identify any evidence to support a factual
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finding that the additional elements are well-understood, routine, and
conventional activity. See Reply Br. 12‒14.
Appellant has not persuaded us of Examiner error. The Examiner
finds the claimed “computing environment” is a generic computer. Non-
Final Act. 3. The Examiner further finds that all of the limitations of claim 1
are directed to the abstract idea and, therefore, none are additional elements
to be considered under Step 2B. See Ans. 11.
As noted above, the claimed “computing environment” is the only
additional element in claim 1. We agree with the Examiner that the claimed
“computing environment” is a generic computer that does not amount to
significantly more than the claimed abstract idea. As discussed above, the
Specification confirms the generic nature of the claimed computer
environment. See, e.g., Spec. ¶¶ 25‒26. Appellant has not persuasively
identified any additional elements recited in claim 1 that amount to
significantly more than the claimed abstract idea.
Because representative claim 1 is directed to a judicial exception,
without significantly more, we sustain the Examiner’s § 101 rejection of
independent claim 1. We also sustain the rejection of independent claims 13
and 24, for which Appellant offers the same arguments. See Reply Br. 4‒15.
Dependent Claims 2, 3, 6‒12, 15‒19, and 21‒23
Appellant argues the Examiner erred by failing to provide any
significant evaluation of the dependent claims. See Appeal Br. 30‒31; Reply
Br. 14. In particular, Appellant argues the Examiner relies on boilerplate
rationale for the dependent claims, failing to consider whether the limitations
recited in the dependent claims recite significantly more than an abstract
idea. See id. Appellant argues the Examiner’s rejection is conclusory and
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fails to identify sufficient evidence to support a finding that the additional
elements are well-understood, routine, and conventional activity. See id.
Appellant has not persuaded us of Examiner error. The Examiner
finds the dependent claims “all further define what is collected, what is
displayed[,] or how the user can manipulate the data displayed on the
screen.” Ans. 12. We agree.
For example, dependent claim 2 recites “the recursable base
representation format compris[es] a recursable sequence of records of
atoms.” Thus, claim 2 further defines the data that is collected, in particular
the format of the data that is collected. Dependent claim 7 recites “the
computing environment represented to a device, and the representation
adjusted according to capabilities of the device.” Thus, claim 7 further
defines how data is displayed. Dependent claim 9 recites “the computing
environment represented for a user, and the representation adjusted
according to the user.” Thus, claim 9 recites how the user can manipulate the
data displayed to the user.
In other words, each of these exemplary dependent claims represents
one of the categories identified by the Examiner. These claims further define
the abstract idea rather than reciting something significantly more than the
abstract idea. Notably, Appellant has identified no particular limitations
recited in these or any other dependent claims that recite significantly more
than an abstract idea. See Appeal Br. 30‒31; Reply Br. 14.
For these reasons, we agree with the Examiner that the dependent
claims do not recite an “inventive concept” sufficient to transform the claims
from an abstract idea to a patent eligible application. We, therefore, sustain
the rejection of dependent claims 2, 3, 6‒12, 15‒19, and 21‒23.
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DECISION SUMMARY
In summary:
Claims Rejected 35 U.S.C. § Basis Affirmed Reversed
1‒3, 6‒13, 15‒19,
21‒24
101 Eligibility 1‒3, 6‒13,
15‒19, 21‒24

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED