Chang Bin Song et al.

Patent Trials and Appeals Board

Dec 30, 2020

2020005246 (P.T.A.B. Dec. 30, 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.
14/151,411 01/09/2014 Chang Bin Song 131320US02 (S17.086) 6886
52025 7590 12/30/2020
SAP SE c/o BUCKLEY, MASCHOFF & TALWALKAR LLC
50 LOCUST AVENUE
NEW CANAAN, CT 06840
EXAMINER
BYRD, UCHE SOWANDE
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
12/30/2020 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):
colabella@bmtpatent.com
martin@BMTPATENT.COM
szpara@bmtpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHANG BIN SONG, THOMAS BRODKORB, DAN BI PARK,
JAN RITTINGER, and JUNGSOO SEO
____________

Appeal 2020-005246
Application 14/151,411
Technology Center 3600
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and
JAMES R. HUGHES, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 1, 3–8, 10–15, and 17–22. 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 SAP SE,
Walldorf, Germany. Appeal Br. 1.
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STATEMENT OF THE CASE
Appellant’s invention pertains to a business or enterprise planning for
future operations, such as deciding whether to add new employees, build
new plants, etc. Spec. 4. To this end, predicted or other values of future
business data elements may be generated, such as future sales or revenue.
Id. To facilitate business planning, the present invention performs
operations at the enterprise database where the data resides instead of the
application server. See Spec. 4. As shown in Figure 2, the enterprise
database stores actual business data 220 and includes an “Enterprise
Performance Management” (EPM) planning model 230 that uses the actual
business data to generate predicted values that are stored at an instantiation
of plan data container 240 at the enterprise database. See Spec. 5–6.
Claim 1 is illustrative:
1. A method associated with an enterprise database,
comprising: providing an enterprise database storing actual
data, an enterprise performance management (EPM) planning
model that describes how to access actual data, and at least
one instantiation of a restricted-access plan data container
object that holds a predicted data value in a user-specific
simulation, wherein the instantiation of the restricted-access
plan data container object cannot be directly queried;
receiving a user-query;
in response to the received user-query, executing, at the
enterprise database, the EPM planning model to use actual data
in the user-specific simulation to generate the predicted
data value;
storing the predicted data value in the at least one
instantiation of the restricted-access plan data container object,
wherein each instantiation of the restricted-access plan data
container object stores a different predicted data value;
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preventing the predicted data value from altering an
unrestricted-access data target; determining when a publish
operation is executed, wherein execution of the
publish operation allows the predicted data value to alter the
data target;
and
transmitting only the predicted data value to one of an
application server and a user interface.

THE REJECTIONS
The Examiner rejected claims 1, 3–8, 10–15, and 17–22 under 35
U.S.C. § 101 as ineligible. Final Act. 2–6.2
The Examiner rejected claims 1, 3–5, 7, 8, 10–12, 14, 15, 17–19, and
21 under 35 U.S.C. § 103 as unpatentable over Nicholls (US 2006/0167704
A1; published July 27, 2006), Humprecht (US 2014/0012833 A1; published
Jan. 9, 2014), and Goodwin (US 2002/0023261 A1; published Feb. 21,
2002). Final Act. 7–34.
The Examiner rejected claims 6, 13, 20, and 22 under 35 U.S.C. § 103
as unpatentable over Nicholls, Humprecht, Goodwin, and Heidasch (US
2013/0262074 A1; published Oct. 3, 2013). Final Act. 34–46.

THE INELIGIBILITY REJECTION
The Examiner determines that the claimed invention is directed to an
abstract idea, namely using and storing enterprise data, which is said to

2 Throughout this opinion, we refer to (1) the Final Rejection mailed August
29, 2019 (“Final Act.”); (2) the Appeal Brief filed January 13, 2020
(“Appeal Br.”); (3) the Examiner’s Answer mailed May 7, 2020 (“Ans.”);
and (4) the Reply Brief filed July 1, 2020 (“Reply Br.”).
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organize human activity via commercial activities or business relations. See
Final Act. 3–4. According to the Examiner, the additional recited computer
elements, including the enterprise database, application server, and user
interface, perform generic computer functions that do not add significantly
more to the abstract idea. Final Act. 4–5.
Appellant argues that the claims are eligible because, among other
things, they do not organize human activity, but rather are directed to a more
efficient operating system that (1) executes operations where data is stored,
namely the enterprise database, and (2) only transfers data requested to be
displayed to avoid mass data transfers and mass operations at application
servers. Appeal Br. 6–11. According to Appellant, by performing mass
operations at the enterprise database where the substantial amount of data
resides, the computer’s function is improved. Appeal Br. 10–11.

ISSUE
Under § 101, has the Examiner erred in rejecting claims 1, 3–8, 10–
15, and 17–22 as directed to ineligible subject matter? This issue turns on
whether the claims are directed to an abstract idea and, if so, whether the
recited elements—considered individually and as an ordered combination—
transform the nature of the claims into a patent-eligible application of that
abstract idea.

PRINCIPLES OF LAW
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 Supreme Court has long interpreted 35 U.S.C. § 101 to include
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implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. See, e.g., Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step 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 187 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 67 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
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statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). That
said, the Supreme 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. (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.
Under the subject matter eligibility guidance in the Manual of Patent
Examining Procedure (MPEP) (9th ed. Rev. 10.2019, June 2020), we first
look to whether the claim recites:
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(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) (see MPEP § 2106.04); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.04; 2106.04(d);
2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception, and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not well-understood, routine, and conventional in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See MPEP § 2106.05.

ANALYSIS
Claims 1, 3–8, 10–15, and 17–22: Alice/Mayo Step One
Representative independent claim 1 recites:
A method associated with an enterprise database,
comprising:

providing an enterprise database storing actual data, an
enterprise performance management (EPM) planning model
that describes how to access actual data, and at least one
instantiation of a restricted-access plan data container object
that holds a predicted data value in a user-specific simulation,
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wherein the instantiation of the restricted-access plan data
container object cannot be directly queried;

receiving a user-query;

in response to the received user-query, executing, at the
enterprise database, the EPM planning model to use actual data
in the user-specific simulation to generate the predicted data
value;

storing the predicted data value in the at least one
instantiation of the restricted-access plan data container object,
wherein each instantiation of the restricted-access plan data
container object stores a different predicted data value;

preventing the predicted data value from altering an
unrestricted-access data target;

determining when a publish operation is executed,
wherein execution of the publish operation allows the predicted
data value to alter the data target;

and

transmitting only the predicted data value to one of an
application server and a user interface.

As the Specification explains, Appellant’s invention pertains to a
business or enterprise planning for future operations, such as deciding
whether to add new employees, build new plants, etc. Spec. 4. To this end,
predicted or other values of future business data elements may be generated,
such as future sales or revenue. Id. To facilitate business planning, typical
systems, such as that shown in Figure 1, employ a planning application on
an application server that (1) retrieves data from an enterprise database, and
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(2) uses that retrieved data to generate predicted data that is used for
business planning. Id.
This approach, however, has performance implications by, for
example, transferring large amounts of data from the enterprise database to
the application server. The present invention addresses this issue by
performing mass operations at the enterprise database where the data resides
instead of the application server. See Spec. 4. As shown in Figure 2, the
enterprise database stores actual business data 220 and includes an
“Enterprise Performance Management” (EPM) planning model 230 that uses
the actual business data to generate predicted values that are stored at an
instantiation of plan data container 240 at the enterprise database. See Spec.
5–6. This system also enables private planning by altering a data target 542
only when the user “publishes” the data from the plan data container 520 to
the target. See Spec. 8; Fig. 5.
Turning to claim 1, we first note that the claim recites a method and,
therefore, falls within the process category of § 101. But despite falling
within this statutory category, we must still determine whether the claim is
directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S.
at 217. To this end, we must determine whether the claim (1) recites a
judicial exception, and (2) fails to integrate the exception into a practical
application. See MPEP § 2106.04(II). If both elements are satisfied, the
claim is directed to a judicial exception under the first step of the Alice/Mayo
test. See id.
The Examiner determines that claim 1 is directed to an abstract idea,
namely using and storing enterprise data, which is said to organize human
activity via commercial activities or business relations. See Final Act. 3–4.
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To determine whether a claim recites an abstract idea, we (1) identify the
claim’s specific limitations that recite an abstract idea, and (2) determine
whether the identified limitations fall within certain subject matter
groupings, namely, (a) mathematical concepts3; (b) certain methods of
organizing human activity4; or (c) mental processes.5
Here, apart from the recited (1) database; (2) object instantiation; (3)
executing a model at the database; (3) storing a predicted data value in at
least one object instantiation; (4) application server; and (5) user interface,
all of claim 1’s recited limitations fit squarely within at least one of the
above categories of the USPTO’s guidelines. When read as a whole, the
recited limitations are directed to generating, storing, and restricting access
to predicted data values based on actual data.
That is, apart from the recited (1) database; (2) object instantiation;
(3) executing a model at the database; (3) storing a predicted data value in at
least one object instantiation; (4) application server; and (5) user interface,
the claimed limitations recite mental processes and certain methods of

3 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See MPEP
§§ 2106.04(a); 2106.04(a)(2)(I).
4 Certain methods of organizing human activity include 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). See MPEP §§ 2106.04(a);
2106.04(a)(2)(II).
5 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See MPEP §§ 2106.04(a);
2106.04(a)(2)(III).
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organizing human activity including fundamental economic practices and
commercial interactions. See MPEP §§ 2106.04(II)–(III).
First, the limitation calling for
providing an enterprise . . . storing actual data, an enterprise
performance management (EPM) planning model that
describes how to access actual data, and at least one . . .
restricted-access plan data container . . . that holds a predicted
data value in a user-specific simulation, wherein the . . .
restricted-access plan data container . . . cannot be directly
queried
can be realized by simply providing a secure file cabinet or other secure
information repository that stores not only paper copies of actual data
associated with an enterprise, but also predicted data values. Cf. In re
Cygnus Telecommunications Technology, LLC, Patent Litigation, 536 F.3d
1343, 1352 (Fed. Cir. 2008) (“A substantial number of cases have records
that fill a drawer or two of a filing cabinet, and some big cases sometimes
fill multiple five-drawer file cabinets in the clerks’ offices.”). Providing and
storing this data is not only a fundamental business practice, but also can be
done with pen and paper. Cf. CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372 (Fed. Cir. 2011) (noting that a person could construct a
map of credit card numbers by merely writing down a list of credit card
transactions made from a particular IP address).
By securing these information repositories to limit access by, for
example, lock and key, the plan data container cannot be queried directly by,
for example, unauthorized personnel. Restricting access to such information
is a fundamental business practice. Cf. Prism Technologies LLC v. T-Mobile
USA, Inc., 696 F. App’x 1014, 1016–18 (Fed. Cir. 2017) (non-precedential)
(holding ineligible claims reciting a method for controlling access to
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protected computer resources by (1) receiving identity data associated with a
client computer device; (2) authenticating the received identity data; (3)
authorizing the client computer device to receive at least part of the
requested protected computer resources; and (4) permitting access to at least
part of the protected computer resources upon successful authentication and
authorization as directed to the abstract idea of providing restricted access to
resources).
Furthermore, an EPM planning model can not only be realized
entirely mentally or with pen and paper, providing such a model for business
planning is also a fundamental business practice. Cf. In re Downing, 754 F.
App’x 988, 990–94 (Fed. Cir. 2018) (non-precedential) (holding ineligible
claims reciting a resource planning forecast product, where the product was
produced by, among other things, designing a forecasting technique on an
Excel computer platform for operation within a resource planning
framework to (1) simplify forecasting initialization; (2) consider social and
technological change; (3) forecast operations and development of strategic
plans of 1–5–15 years simultaneously; (4) provide for automatic updates as
directed to the abstract idea of personal management, resource planning, or
forecasting); CyberSource, 654 F.3d at 1372 (noting that a recited step that
utilized a map of credit card numbers to determine validity of a credit card
transaction could be performed entirely mentally by merely using logical
reasoning to identify a likely instance of fraud by merely observing that
numerous transactions using different credit cards all originated from the
same IP address).
Therefore,
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providing an enterprise . . . storing actual data, an enterprise
performance management (EPM) planning model that
describes how to access actual data, and at least one . . .
restricted-access plan data container . . . that holds a predicted
data value in a user-specific simulation, wherein the . . .
restricted-access plan data container . . . cannot be directly
queried
falls in the mental processes and certain methods of organizing human
activity categories of the USPTO’s eligibility guidelines, and thus recites an
abstract idea. See MPEP §§ 2106.04(a)(2)(II)–(III).
Second, the limitation reciting receiving a user-query involves at least
personal interactions, including following rules or instructions, at least to the
extent that a person could receive and store this information entirely
mentally by merely reading pertinent records or other associated information
or writing this information down. Cf. CyberSource, 654 F.3d at 1372
(noting that limitation reciting obtaining information about transactions that
have used an Internet address identified with a credit card transaction can be
performed by a human who simply reads records of Internet credit card
transactions from a pre-existing database). Alternatively, a person could
receive that information by communicating with another person with such
knowledge, such as a colleague, or by writing this information down. Cf.
id.; In re Salwan, 681 F. App’x 938, 939–41 (Fed. Cir. 2017) (unpublished)
(holding ineligible claims reciting, among other things, receiving medical
records information and transmitting reports where the claimed invention’s
objective was to enable electronic communication of tasks that were
otherwise done manually using paper, phone, and facsimile machine);
Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1344 (Fed. Cir. 2018)
(noting that a nontechnical human activity of passing a note to a person who
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is in a meeting or conversation as illustrating the invention’s focus, namely
providing information to a person without interfering with the person’s
primary activity); LendingTree, LLC v. Zillow, Inc., 656 F. App’x 991, 993–
94, 996 (Fed. Cir. 2016) (unpublished) (holding ineligible claims reciting,
among other things, (1) receiving selection criteria from lending institutions
and credit data from a computer user, and (2) forwarding the credit data to
selected lending institutions as directed to an abstract idea). Therefore, the
recited receiving limitation falls squarely within the mental processes and
methods of organizing human activity categories of the USPTO’s eligibility
guidelines and, therefore, recites an abstract idea. See MPEP §§
2106.04(a)(2)(II)–(III) (listing exemplary (1) mental processes including
observation and evaluation, and (2) methods of organizing human activity,
including personal interactions and following rules or instructions).
Third, the limitations calling for (1) “in response to the received user-
query, executing . . . the EPM planning model to use actual data in the user-
specific simulation to generate the predicted data value”; and (2) “storing
the predicted data value in the at least one . . . restricted-access plan data
container . . . wherein . . . the restricted-access plan data container . . .
stores a different predicted data value” not only recite fundamental business
practices and relations, they can be also be done entirely mentally or with
pen and paper by merely thinking about—or writing down—the EPM
planning model and the predicted data values generated from that model
from actual data—steps that involve involving mere observation and logical
reasoning. Cf. CyberSource, 654 F.3d at 1372 (noting that a recited step that
utilized a map of credit card numbers to determine the validity of a credit
card transaction could be performed entirely mentally by merely using
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logical reasoning to identify a likely instance of fraud by merely observing
that numerous transactions using different credit cards all originated from
the same IP address). Therefore, the recited EPM planning model execution
and predicted data value storing steps fall in the mental processes and certain
methods of organizing human activity categories of the USPTO’s eligibility
guidelines, and thus recite an abstract idea. See MPEP §§ 2106.04(a)(2)(II)–
(III). That page 12 of Appellant’s Specification notes that the plan data
container is an abstract concept only further bolsters the notion that this
limitation recites an abstract idea.
Fourth, the limitation reciting preventing the “predicted data value
from altering an unrestricted-access data target” can not only be done by
writing down the predicted data value on a piece of paper and not
communicating it to others, this limitation also recites a fundamental
business practice that restricts access to certain information. Cf. Prism
Technologies, 696 F. App’x at 1016–18 (holding ineligible claims reciting a
method for controlling access to protected computer resources by (1)
receiving identity data associated with a client computer device; (2)
authenticating the received identity data; (3) authorizing the client computer
device to receive at least part of the requested protected computer resources;
and (4) permitting access to at least part of the protected computer resources
upon successful authentication and authorization as directed to the abstract
idea of providing restricted access to resources).
Lastly, the limitations calling for “determining when a publish
operation is executed, wherein execution of the publish operation allows the
predicted data value to alter the data target and transmitting only the
predicted data value . . .” involves at least personal interactions, including
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following rules or instructions, at least to the extent that a person could
receive and store this information entirely mentally by merely reading
pertinent records or other associated information or writing this information
down. Cf. CyberSource, 654 F.3d at 1372 (noting that limitation reciting
obtaining information about transactions that have used an Internet address
identified with a credit card transaction can be performed by a human who
simply reads records of Internet credit card transactions from a pre-existing
database). Alternatively, a person could receive that information by
communicating with another person with such knowledge, such as a
colleague, or by writing this information down. Cf. id.; Salwan, 681 F.
App’x at 939–41 (holding ineligible claims reciting, among other things,
receiving medical records information and transmitting reports where the
claimed invention’s objective was to enable electronic communication of
tasks that were otherwise done manually using paper, phone, and facsimile
machine); Interval Licensing, 896 F.3d at 1344 (noting that a nontechnical
human activity of passing a note to a person who is in a meeting or
conversation as illustrating the invention’s focus, namely providing
information to a person without interfering with the person’s primary
activity); LendingTree, 656 F. App’x at 993–94, 996 (holding ineligible
claims reciting, among other things, (1) receiving selection criteria from
lending institutions and credit data from a computer user, and (2) forwarding
the credit data to selected lending institutions as directed to an abstract idea).
We reach this conclusion noting that a person can alter a “data target”
by merely adding a piece of information, such as a data value printed on a
piece of paper, to an information repository that is accessible to others, such
as a file cabinet in an office—a fundamental business practice. Cf. Cygnus,
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536 F.3d at 1352 (“A substantial number of cases have records that fill a
drawer or two of a filing cabinet, and some big cases sometimes fill multiple
five-drawer file cabinets in the clerks’ offices.”). Moreover, transmitting
only certain information, but not other information, to others merely filters
content for transmission—a well-known method of organizing human
behavior. Cf. BASCOM Global Internet Services, Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (“[F]iltering content is an
abstract idea because it is a longstanding, well-known method of organizing
human behavior, similar to concepts previously found to be abstract.”).
Accordingly, the recited determining and transmitting limitations fall
squarely within the mental processes and certain methods of organizing
human activity categories of the USPTO’s eligibility guidelines and,
therefore, recite an abstract idea. See MPEP §§ 2106.04(a)(2)(II)–(III)
(listing exemplary (1) mental processes including observation and
evaluation, and (2) methods of organizing human activity, including
personal interactions and following rules or instructions).
Therefore, apart from the recited (1) database; (2) object
instantiation; (3) executing a model at the database; (3) storing a predicted
data value in at least one object instantiation; (4) application server; and (5)
user interface, all of claim 1’s recited limitations fit squarely within at least
one of the above categories of the USPTO’s eligibility guidelines and,
therefore, recite an abstract idea. See MPEP §§ 2106.04(II)–(III).
Notably, the five elements enumerated above are the only recited
elements beyond the abstract idea, but these additional elements, considered
individually and in combination, do not integrate the abstract idea into a
practical application when reading claim 1 as a whole.
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First, we are not persuaded that the claimed invention improves a
computer or its components’ functionality or efficiency, or otherwise
changes the way those devices function, at least in the sense contemplated
by the Federal Circuit in Enfish LLC v. Microsoft Corporation, 822 F.3d
1327 (Fed. Cir. 2016). The claimed self-referential table in Enfish was a
specific type of data structure designed to improve the way a computer
stores and retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent
Appellant contends that the claimed invention uses such a data structure to
improve a computer’s functionality or efficiency, or otherwise change the
way that device functions, there is no persuasive evidence on this record to
substantiate such a contention.
To the extent that Appellant contends that the claimed invention is
rooted in technology because it is ostensibly directed to a technical solution
(see Appeal Br. 6–11), we disagree. Even assuming, without deciding, that
the claimed invention can generate, store, and restrict access to predicted
data values based on actual data faster or more efficiently than doing so
manually, any speed or efficiency increase comes from the capabilities of
the generic computer components—not the recited process itself. See
FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d
1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”)); see also Intellectual
Ventures I LLC v. Erie Indemnity Co., 711 F. App’x 1012, 1017 (Fed. Cir.
2017) (non-precedential) (“Though the claims purport to accelerate the
process of finding errant files and to reduce error, we have held that speed
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and accuracy increases stemming from the ordinary capabilities of a general-
purpose computer do not materially alter the patent eligibility of the claimed
subject matter.”). Like the claims in FairWarning, the focus of claim 1 is
not on an improvement in computer processors as tools, but on certain
independently abstract ideas that use generic computing components as
tools. See FairWarning, 839 F.3d at 1095.
Nor is this invention analogous to that which the court held eligible in
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016). There, the claimed process used a combined order of specific
rules that rendered information in a specific format that was applied to create
a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques—an improvement over manual three-
dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here generates, stores, and restricts access to predicted data values
based on actual data. This generic computer implementation is not only
directed to mental processes and certain methods of organizing human
activity, but also does not improve a display mechanism as was the case in
McRO. See SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir.
2018) (distinguishing McRO).
Nor is this invention analogous to that which the court held eligible in
Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143 (Fed. Cir.
2019). There, the recited device checked for data errors based on original
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data provided in blocks, where each block had bits in a particular ordered
sequence. Gemalto, 942 F.3d at 1147–48. The recited device further
included a varying device configured to, among other things, permute bit
position relative to the particular ordered sequence for at least some bits in
each block making up the original data without reordering any original data
blocks. Id. In reaching its eligibility conclusion, the court noted that the
claimed invention specifically recited how the permutation was used,
namely by modifying the permutation applied to different data blocks, and
this specific implementation was a key insight to enabling prior art error
detection systems to catch previously undetectable systematic errors. Id. at
1153. The court then concluded that the claimed invention was not directed
to an abstract idea because it sufficiently captured the specific asserted
improvement in detecting systematic errors contributed by the inventors in
that case. Id.
That is not the case here. To the extent that Appellant contends that
the claimed invention here is directed to such technical improvements and
capabilities (see Appeal Br. 7), we disagree.
On this record, then, the claimed invention does not recite additional
elements that (1) improve a computer itself; (2) improve another technology
or technical field; (3) implement the abstract idea in conjunction with a
particular machine or manufacture that is integral to the claim; (4) transform
or reduce a particular article to a different state or thing; or (5) apply or use
the abstract idea in some other meaningful way beyond generally linking the
abstract idea’s use to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See MPEP §§ 2106.04(d)(I); 2106.05(a)–(c), (e). In short, the
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claim’s additional elements do not integrate the abstract idea into a practical
application when reading claim 1 as a whole.
In conclusion, although the recited functions may be beneficial by
generating, storing, and restricting access to predicted data values based on
actual data, a claim for a useful or beneficial abstract idea is still an abstract
idea. See Ariosa, 788 F.3d at 1379–80.
We, therefore, agree with the Examiner that claim 1 is directed to an
abstract idea.

Claims 1, 3–8, 10–15, and 17–22: Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim 1’s additional recited elements,
namely the recited (1) database; (2) object instantiation; (3) executing a
model at the database; (3) storing a predicted data value in at least one
object instantiation; (4) application server; and (5) user interface—
considered individually and as an ordered combination—do not provide an
inventive concept that amounts to significantly more than the abstract idea
when reading claim 1 as a whole. See Alice, 573 U.S. at 221; see also
MPEP § 2106.05. As noted above, the claimed invention merely uses
generic computing components to implement the recited abstract idea.
To the extent Appellant contends that the recited transmission of only
the predicted data value after a publishing operation is executed adds
significantly more than the abstract idea to provide an inventive concept
under Alice/Mayo step two (see Appeal Br. 9–11), this limitations is not an
additional element beyond the abstract idea, but rather recites an abstract
idea as noted previously. See BSG Tech LLC v Buyseasons, Inc., 899 F.3d
1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme Court in Alice
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“only assessed whether the claim limitations other than the invention’s use
of the ineligible concept to which it was directed were well-understood,
routine and conventional”) (emphasis added); see also MPEP §§ 2106.05
(instructing that additional recited elements should be evaluated in
Alice/Mayo step two to determine whether they (1) add specific limitations
that are not well-understood, routine, and conventional in the field, or (2)
simply append well-understood, routine, and conventional activities
previously known to the industry); 2106.05(d).
Rather, the claimed (1) database; (2) object instantiation; (3)
executing a model at the database; (3) storing a predicted data value in at
least one object instantiation; (4) application server; and (5) user interface
are the additional recited elements whose generic computing functionality is
well-understood, routine, and conventional. See Intellectual Ventures, 792
F.3d at 1368 (noting that a recited user profile (i.e., a profile keyed to a user
identity), database, and communication medium are generic computer
elements); Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096
(Fed. Cir. 2016) (noting that using generic computing components like a
microprocessor or user interface do not transform an otherwise abstract idea
into eligible subject matter); Mortgage Grader Inc. v. First Choice Loan
Services, Inc., 811 F.3d 1314, 1324-25 (Fed. Cir. 2016) (noting that
components such an “interface,” “network,” and “database” are generic
computer components that do not satisfy the inventive concept requirement);
In re Salwan, 681 F. App’x 938, 941 (Fed. Cir. 2017) (non-precedential)
(“Given that the claims are directed to well-known business practices, the
claimed elements of a generic ‘network,’ ‘computer program,’ ‘central
server,’ ‘device,’ and ‘server for processing and transferring’ are simply not
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enough to transform the abstract idea into a patent-eligible invention.”);
accord Spec. 8 (noting that the disclosed apparatus can comprise a general-
purpose computing apparatus); Ans. 6–7.
In conclusion, the additional recited elements—considered
individually and as an ordered combination—do not add significantly more
than the abstract idea to provide an inventive concept under Alice/Mayo step
two when reading claim 1 as a whole. See Alice, 573 U.S. at 221; see also
MPEP § 2106.05.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 3–8, 10–15, and 17–22 not argued separately with
particularity.

THE OBVIOUSNESS REJECTION OVER NICHOLLS, HUMPRECHT,
AND GOODWIN

Regarding independent claim 1, the Examiner finds that Nicholls (1)
executes, at an enterprise database, an EPM planning model to use actual
data in a user-specific simulation to generate a predicted data value, and (2)
stores the predicted data value in a plan data container, where each such
container stores a different predicted data value. Final Act. 7–11. Although
the Examiner acknowledges that Nicholls lacks the recited (1) enterprise
database storing actual data; (2) EPM planning model that describes how to
access actual data; (3) restricted-access plan data container that (a) holds a
predicted data value in a user-specific simulation, and (b) cannot be directly
queried; and (4) preventing the predicted data value from altering an
unrestricted-access data target, the Examiner cites Humprecht as teaching
these features. Final Act. 11–14. The Examiner also acknowledges that the
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Nicholls/Humprecht system lacks the recited (1) instantiation; (2) data
objects; (3) receiving a user-query; and (4) performing the recited execution
responsive to that query, but cites Goodwin for teaching these features in
concluding that the claim would have been obvious. Final Act. 15–16.
Appellant argues that Nicholls’s storing predicted values in
repositories or data warehouses that can be queried directly does not teach or
suggest storing the predicted data value in at least one instantiation of a
restricted-access plan data container object, where each such instantiation
(1) stores a different predicted data value, and (2) cannot be queried directly
as claimed. Appeal Br. 13; Reply Br. 2. According to Appellant, providing
a separate restricted-access plan container object for each different predicted
data value, allows keeping the predicted value private while the user plans,
such that only the user who created the data can access the data unless the
user decides to publish it. Appeal Br. 13. Appellant adds that not only does
the cited prior art fail to teach or suggest that each instantiation stores a
different predicted data value, Humprecht’s stored data can be queried
directly unlike the claimed invention’s instantiations. See Appeal Br. 14–15.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Nicholls, Humprecht, and Goodwin collectively would have taught or
suggested storing a predicted data value in at least one instantiation of a
restricted-access plan data container object, where each such instantiation
(1) stores a different predicted data value, and (2) cannot be queried
directly?

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ANALYSIS
As noted above, the Examiner relies principally on Nicholls for
teaching the recited predicted data value storing limitation, but cites
Goodwin for teaching the recited object and instantiation. See Final Act.
15–16; Ans. 9. The Examiner also cites Humprecht for teaching restricting
access to sensitive data by blocking its use, thus preventing it from being
queried directly. Final Act. 12; Ans. 9. Therefore, the Examiner relies on
Nicholls, Humprecht, and Goodwin collectively for teaching the recited
predicted data value storing limitation.
The Examiner’s findings in this regard, however, are problematic on
this record. As noted above, a key aspect of the claimed invention is that
each instantiation of the restricted-access plan data container object stores a
different predicted data value. To be sure, Humprecht’s system restricts
access to sensitive data in paragraph 22 and, therefore, suggests that this data
cannot be queried directly, at least by those who have been denied access.
Also, Goodwin’s paragraphs 55 and 132 teach instantiating objects. And
Nicholls’s paragraphs 48 and 49 describe (1) storing expected and predicted
values of metrics; (2) updating an associated expected and predicted model
periodically; and (3) comparing a predicted model with target values to
determine whether a business is on track. Although this functionality
suggests storing predicted data values in a repository or data warehouse as
Appellant acknowledges (see Appeal Br. 13), Nicholls’s relied-upon
passages say nothing about storing a different predicted data value in each
storage location, let alone storing a different predicted data value in each
instantiation of a restricted-access plan data container object that cannot be
queried directly as claimed.
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That is, under the Examiner’s proposed combination, the cited
references collectively fail to teach or suggest storing a different predicted
data value in each instantiation of a restricted-access plan data container
object that cannot be queried directly as claimed. The Examiner’s equating
Nicholls’s target values to “various” predicted data values and, therefore,
“different” predicted data values (Ans. 9) is unavailing. As Appellant
explains, a target value is not a predicted value, particularly given Nicholls
distinguishing the two types of values in paragraphs 48 and 49. Accord
Reply Br. 2 (noting this distinction). So, not only is the Examiner’s
mapping contrary to Nicholls’s teachings, the Examiner has still not shown
in the cited references that different predicted data values are stored in each
instantiation of a restricted-access plan data container object that cannot be
queried directly as claimed.
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 1; (2) independent claims 8 and 15 that recite
commensurate limitations; and (3) dependent claims 3–5, 7, 10–12, 14, 17–
19, and 21 for similar reasons.

THE OTHER OBVIOUSNESS REJECTION
Because the Examiner has not shown that Heidasch cures the above-
noted deficiencies regarding the rejection of the independent claims, we will
not sustain the obviousness rejection of claims 6, 13, 20, and 22 (Final Act.
34–46) for similar reasons.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)
/Basis
Affirmed Reversed
1, 3–8,
10–15,
17–22
101 Ineligibility 1, 3–8, 10–
15, 17–22

1, 3–5, 7,
8, 10–12,
14, 15,
17–19,
21
103 Nicholls,
Humprecht,
Goodwin
1, 3–5, 7,
8, 10–12,
14, 15,
17–19, 21
6, 13, 20,
22
103 Nicholls,
Humprecht,
Goodwin,
Heidasch
6, 13, 20,
22
Overall
Outcome
1, 3–8, 10–
15, 17–22

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)(1).

AFFIRMED