BMC Software, Inc.

Patent Trials and Appeals Board

May 21, 2020

2019004288 (P.T.A.B. May. 21, 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.
13/930,466 06/28/2013 Vineesh PUTHIYOTTIL 0081-312001/13-011-US 4979
93236 7590 05/21/2020
Brake Hughes Bellermann LLP
P.O. Box 1077
Middletown, MD 21769
EXAMINER
SWARTZ, STEPHEN S
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
05/21/2020 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@brakehughes.com
uspto@brakehughes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VINEESH PUTHIYOTTIL and
SAMEER KULKARNI

Appeal 2019-004288
Application 13/930,466
Technology Center 3600

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
TARA L. HUTCHINGS, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s Final decision to reject claims 1–20.1 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(a). Appellant identifies BMC Software, Inc. as the real party in
interest. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claimed subject matter relates to “to trouble ticket assignment”
(Spec. para. 2). Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method comprising:
receiving a ticket indicating a problem;
generating an auction for the ticket;
generating a plurality of messages based on the auction;
communicating the plurality of messages to a plurality of
agents as participants in the auction;
receiving at least two responses to resolve the problem
from at least two agents, the at least two responses including one
of a bid, a hold, and a no bid, the bid including a time to
resolution;
determining if there is a conflict between two or more
bids;
upon determining there is a conflict between the two or
more bids:
resolving the conflict between the two or more bids
based on a coefficient of deviation for each of the agents who
responded, wherein the coefficient of deviation is calculated
based on an estimated time for resolution for at least one
completed ticket and an actual completion time for the at least
one completed ticket;
and
allocating the ticket to one of the plurality of agents based
on the resolved conflict,
wherein the coefficient of deviation for an agent who
responded is calculated using:

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REJECTION
Claims 1–20 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
OPINION
Appellant argues these claims as a group. See Appeal Br. 18–27. We
select claim 1 as the representative claim for this group, and the remaining
claims 2–20 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv)
(2018).
Preliminary comment
Our following analysis will comport with the 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019),
hereinafter “2019 Revised 101 Guidance”. Previous guidance such as the
Office’s 2014 Interim Guidance on Patent Subject Matter Eligibility (cited at
Appeal Br. 19) have been superseded by the 2019 Revised 101 Guidance, 84
Fed. Reg. at 51 (“Eligibility–related guidance issued prior to the Ninth
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Edition, R–08.2017, of the MPEP (published Jan. 2018) should not be relied
upon.”)
Introduction
35 U.S.C. § 101 provides that “[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor.”
In that regard, claim 1 covers a “process” and is, thus, statutory
subject matter for which a patent may be obtained.2 This is not in dispute.
However, the § 101 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)).
In that regard, notwithstanding claim 1 covers statutory subject
matter, the Examiner has raised a question of patent–eligibility on the
ground that claim 1 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Id. at 217.
Alice step one – the “directed to” inquiry
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Id. at 218
(emphasis added).

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether “a claim is to a statutory category.” Id. at 53.
See also sentence bridging pages 53 and 54 (“consider[ ] whether the
claimed subject matter falls within the four statutory categories of patentable
subject matter identified by 35 U.S.C. 101 . . . .”).
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The Examiner determined that claim 1 is directed to, inter alia,
“managing task assignments through bidding and handling conflict.” Final
Act. 9; see also Ans. 3.
Appellant disagrees, arguing inter alia that
The Examiner's Answer misunderstands or misinterprets
Claim 1 and its technical impact. The primary purpose of claim
1 is not to manage, reward, or organize individual agents, but to
marshal the best resources to resolve a problem in the IT
infrastructure of an organization. A time to resolution of the
problem is of concern when restoring the IT infrastructure (see
e.g., Specification ¶ [0003]). Claim 1 enables the best resources
(i.e., the most capable and efficient agents) to be directed to
efficiently resolve service issues/tickets in the IT infrastructure
in a timely manner. While Claim 1 may describe a procedure
(i.e., a self-selecting auction) for selecting the best capable
service agents for resolving the problem service issues/tickets,
the primary focus of Claim 1 is clearly on resolving the problem
in the IT infrastructure in a timely manner and not on organizing
the behaviour of the service agents.
Reply Br. 2–3. See also Appeal Br. 25 (cited at Reply Br. 2) (“Appellant
notes that Claim 1 describes a practical solution for efficiently resolving
service issues/tickets in an IT Infrastructure of an organization by allocating
service tickets individually to agents having the right skills to efficiently
resolve the service issues/tickets.”)
Accordingly, there is a dispute over whether claim 1 is directed to an
abstract idea. Specifically, is claim 1 directed to “managing task assignments
through bidding and handling conflict” (Final Act. 9) or “to marshal the best
resources to resolve a problem in the IT infrastructure of an organization”
(Reply Br. 2).
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The Abstract Idea3
Above, where we reproduce claim 1, we identify in italics the
limitations we believe recite an abstract idea.4 We determine that the
identified limitations describe a scheme for managing tasks, specifically
assigning trouble tickets. Managing tasks, albeit in this case involving
trouble tickets, is a fundamental economic practice. It falls within the
enumerated “[c]ertain methods of organizing human activity” grouping of
abstract ideas set forth in the 2019 Revised 101 Guidance.5
On pages 24–25 of the Appeal Brief, Appellant states that

3 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. Step 2A is two prong inquiry.
4 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101
Guidance. “To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific limitation(s) in the claim
under examination (individually or in combination) that the Examiner
believes recites an abstract idea . . . .” 2019 Revised 101 Guidance, 84 Fed.
Reg. at 54.
5 This corresponds to Prong One (“Evaluate Whether the Claim Recites a
Judicial Exception”) (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section I of the
[2019 Revised 101 Guidance].” 2019 Revised 101 Guidance, 84 Fed. Reg.
at 54. This case implicates subject matter grouping “(b) Certain methods of
organizing human activity—fundamental economic principles or practices
(including hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or interactions
between people (including social activities, teaching, and following rules or
instructions).” Id. at 52.
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the first eight clauses of Claim 1 … do not recite subject matter
that can be categorized as being in any of the three enumerated
groupings of subject matter that is considered to be an abstract
idea (i.e., "Mathematical concepts", "Certain methods of
organizing human activity" and "Mental processes") defined in
PEG 2019.
Also, according to Appellant, “[t]he ninth clause of Claim 1 (which
describes allotting a ticket to one of the plurality of agents based on
resolving the conflict between the two or more bids) does not represent
fundamental economic principles or practices, commercial or legal
interactions, or managing personal behavior or relationships or interactions
between people.” Appeal Br. 25. We are unpersuaded by Appellant’s
argument.
Managing tasks is a business practice that has been around for
hundreds of years, amounting to a fundamental economic practice. That the
claimed process implements such a practice via a scheme for assigning
trouble tickets does not make the claim any less directed to an abstract idea.
It simply limits the abstract idea (managing tasks) to a particular
environment. Cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362–63 (Fed. Cir. 2015).

Improvement In the Functioning of a Computer6 (Appellant’s
Argument)

6 This corresponds to Prong Two (“If the Claim Recites a Judicial Exception,
Evaluate Whether the Judicial Exception Is Integrated Into a Practical
Application”) of Step 2A of the 2019 Revised 101 Guidance. “A claim that
integrates a judicial exception into a practical application will apply, rely on,
or 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
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The Examiner’s characterization of what the claim is directed to is
essentially the same as ours.
We have reviewed the record and are unpersuaded as to error in the
Examiner’s characterization of what claim 1 is directed to.
Appellant’s central argument concerning computer technology has
been fully considered but the principal difficulty with Appellant’s position is
that it is not commensurate in scope with what is claimed. “Many of
appellant’s arguments fail from the outset because, . . . they are not based on
limitations appearing in the claims . . . .” In re Self, 671 F.2d 1344, 1348
(CCPA 1982). Cf. In re Jobin, 2020 WL 2298381, at *4 (Fed. Cir. 2020)
(“We reject Jobin’s arguments to the contrary, which amount to nothing
more than conclusory statements unmoored from specific claim language.”)
For example,
Appellant respectfully submits that the claims at issue here
recite patent-eligible subject matter not because they recite
generic computer components, but because they recite a “non-
conventional and non-generic arrangement [or use] of known,
conventional pieces” that improves computer-related technology
or other technical field.
Appeal Br. 22. But there is no mention or suggestion of any computer
technology in claim 1. Nor does claim 1 recite elements (e.g., “known,
conventional pieces”) which could be construed as potentially affecting

designed to monopolize the judicial exception.” 2019 Revised 101
Guidance, 84 Fed. Reg. at 54. One consideration, implicated here, that is
“indicative that an additional element (or combination of elements)[] may
have integrated the exception into a practical application” (id. at 55) is if
“[a]n additional element reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field” (id.
at 55).
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computer-related technology. In fact, the claimed subject matter as set forth
in claim 1) is not tied to any particular machine.
Also,
Appellant notes that Claim 1 describes a practical solution
for efficiently resolving service issues/tickets in an IT
Infrastructure of an organization by allocating service tickets
individually to agents having the right skills to efficiently resolve
the service issues/tickets.
Appeal Br. 25. But there is no mention or suggestion of an IT infrastructure
in claim 1.
Appellant adds that “[t]he practical application of Claim 1 results in
improvement to the functioning of computers (i.e., the IT infrastructure of an
organization). MPEP 2106.05(a).” Id. Again, there is no computer
mentioned in claim 1. Arguments such as these — that direct our attention to
improvements to the functioning of computers — cannot persuade us as to
error in a rejection made under § 101 for patent-eligibility if the claimed
subject matter is not limited to computers.
Similarly, the Reply Brief speaks of a “system problem.” See Reply
Br. 3 (“the claimed subject matter is integrated into the practical application
of timely resolving the system problem.”) According to Appellant, “‘Claim 1
results in improvement to the functioning of computers’ (i.e., by timely
maintenance of, and resolution of service issues in, the IT infrastructure of
the organization).” Reply Br. 2 (quoting Appeal Br. 25). See also id. at 2–3.
The Examiner’s Answer misunderstands or misinterprets
Claim 1 and its technical impact. The primary purpose of claim
1 is not to manage, reward, or organize individual agents, but to
marshal the best resources to resolve a problem in the IT
infrastructure of an organization. A time to resolution of the
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problem is of concern when restoring the IT infrastructure (see
e.g., Specification ¶ [0003]). Claim 1 enables the best resources
(i.e., the most capable and efficient agents) to be directed to
efficiently resolve service issues/tickets in the IT infrastructure
in a timely manner. While Claim 1 may describe a procedure
(i.e., a self-selecting auction) for selecting the best capable
service agents for resolving the problem service issues/tickets,
the primary focus of Claim 1 is clearly on resolving the problem
in the IT infrastructure in a timely manner and not on organizing
the behaviour of the service agents.
But there is no computer mentioned in claim 1.
Because there is no computer mentioned, let alone an IT
infrastructure, we are not put in a position to determine whether claim 1 is
directed away from an abstract idea for being directed to the technical
impact of timely resolving a system problem as Appellant asserts.
We are not placed in a position to determine whether, within the
meaning of the 2019 Revised 101 Guidance, there is integration into a
practical application, on the ground that the claimed method improves
computer technology, as Appellant argues, because claim 1 is not so limited.
We have considered Appellant’s other arguments challenging the
Examiner’s determination under step one of the Alice framework and find
them unpersuasive. For the foregoing reasons, the record supports the
Examiner’s determination that claim 1 is directed to an abstract idea.

Alice step two – Does the Claim Provide an Inventive Concept?7
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in

7 This corresponds to Step 2B of the 2019 Revised 101 Guidance (see 84
Fed. Reg. at 56). “[I]f a claim has been determined to be directed to a
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practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 73).
In that regard, the Examiner determined, inter alia, that:
the additional elements of claims (1-13) and (14-20) are
identified as a server, a network, and a non-transitory computer
readable medium. The specification further points to a personal
computer, and processor. These additional elements are not
sufficient to amount to significantly more than the judicial
exception because they do not recite, for example: an
improvement to another technology or technical field;
improvements to the functioning of the computer itself; applying
the judicial exception with, or by use of, a particular machine;
effecting a transformation or reduction of a particular article to a
different state or thing; adding a specific limitation other than
what is well-understood, routine and conventional in the field, or
adding unconventional steps that confine the claim to a particular
useful application; or other meaningful limitations beyond
generally linking the use of the judicial exception to a particular
technological environment (Note: this is not an exhaustive list).
The determination that the elements do not amount to
significantly more than the abstract idea is supported by the
finding that the specification and the current claims are silent
regarding any improvements to the functioning of the computer
itself or the need for a particular machine on which to apply the
abstract idea. No particular machines are explicitly involved in
accomplishing the abstract idea as can be seen in specification
par. [0006], and par. [0019], the computer systems may include
appropriate memory and storage device and as can be seen in the
cited portion of the specification the invention uses a generic
machine to perform the steps of the invention. The claims do not
include additional elements that are sufficient to amount to

judicial exception under revised Step 2A, examiners should then evaluate the
additional elements individually and in combination under Step 2B to
determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).”
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significantly more than the judicial exception because the
additional elements when considered both individually and as
a combination do not amount to significantly more than the
abstract idea. Generic computer features such as a processing
devices, processing systems performing generic computer
functions, and tangible computer readable storage medium do
not amount to significantly more than the abstract idea. The type
of information being manipulated does not impose meaningful
limitations or render the idea less abstract. Looking at the
elements as a combination does not add anything more than the
elements analyzed individually.
Final Act. 13–14.
For its part, Appellant argues that “even if the individual elements
may be conventional, at least the combination of elements in the claims
(viewed as a whole) is unconventional.” App. Br. 26. Our difficulty is that
Appellant does not explain and we are unclear what “elements” Appellant is
referring to. Notwithstanding the Examiner refers to “a server, a network,
and a non-transitory computer readable medium,” claim 1 does not in fact
mention any of those elements.
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 1 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into an inventive application.
We have considered all of the Appellant’s arguments (including those
made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the
determination that representative claim 1, and claims 2–5 and 11–15 which
stand or fall with claim 1, are directed to an abstract idea and do not present
an “inventive concept,” we sustain the Examiner’s conclusion that they are
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directed to patent-ineligible subject matter for being judicially-excepted
from 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow, Inc., 656 Fed. App’x
991, 997 (Fed. Cir. 2016) (“We have considered all of LendingTree’s
remaining arguments and have found them unpersuasive. Accordingly,
because the asserted claims of the patents in suit are directed to an abstract
idea and do not present an ‘inventive concept,’ we hold that they are directed
to ineligible subject matter under 35 U.S.C. § 101.”); see, e.g., OIP Techs.,
788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1098 (Fed. Cir. 2016).
For the foregoing reasons, we are unpersuaded as to error in the
rejection.
CONCLUSION
The decision of the Examiner to reject claims 1–20 is affirmed.
More specifically:
Claims 1–20 rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20

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