DAN, ASIT et al.

Patent Trials and Appeals Board

Mar 31, 2020

13565467 - (D) (P.T.A.B. Mar. 31, 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.
13/565,467 08/02/2012 ASIT DAN CAM920120016US2_8150-0274 9120
52021 7590 03/31/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
FLEISCHER, MARK A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
03/31/2020 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ASIT DAN and MIKE A. MARIN
____________

Appeal 2018-008252
Application 13/565,467
Technology Center 3600
____________

Before PHILIP J. HOFFMANN, KENNETH G. SCHOPFER, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 36–45. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed Mar. 15, 2018) and Reply Brief (“Reply Br.,” filed Aug. 10, 2018), and
the Examiner’s Answer (“Ans.,” mailed June 13, 2018) and Final Office
Action (“Final Act.,” mailed Oct. 18, 2017). Appellant identifies IBM
Corporation as the real party in interest. Appeal Br. 1.
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CLAIMED INVENTION
Claim 36, reproduced below with bracketed notations added, is the
sole independent claim on appeal, and is representative of the claimed
subject matter:
36. A computer-implemented method using a business
process development tool stored within memory elements of a
computer hardware system, comprising:
[(a)] creating, by the business process development tool,
a programmatic representation of a business process;
[(b)] identifying, within a programmatic representation
of a business process, an insertion point corresponding to a
decision to be performed during the business process;
[(c)] generating, within the programmatic representation
of the business process and at the insertion point, a decision
reference;
[(d)] presenting, using the business process development
tool, a plurality of different decision modes capable of being
associated with the decision;
[(e)] receiving, from a user of the business process
development tool, user input that selects one of the plurality of
different decision modes; and
[(f)] generating, using business process development
tool, a decision description file that associates the decision with
the selected one of the plurality of different decision modes,
wherein
[(g)] the decision reference is programmatic code within
the programmatic representation of the business process that
invokes the decision description file,
[(h)] the decision description file is configured to be used
to select a decision service that implements the decision, and
[(i)] the creating of the programmatic representation of
the business process is decoupled from the creating of the
decision service.

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REJECTIONS
Claims 36–45 are rejected under 35 U.S.C. § 112, second paragraph
as indefinite.
Claims 36–45 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
ANALYSIS
Indefiniteness
Claim 36 recites “generating . . . a decision reference” (limitation (c)),
and that “the decision reference is programmatic code” (limitation (g)). In
rejecting claims 36–45 under 35 U.S.C. § 112, second paragraph, as
indefinite, the Examiner takes issue with claim 36 for omitting essential
steps. Final Act. 5. In particular, the Examiner determines that the claim
does not indicate how the claimed generating is accomplished, “amounting
to a gap between the steps.” Id. (citing Manual of Patent Examining
Procedure (“MPEP”) § 2172.01).
MPEP § 2172.01 states that “essential matter may include missing
elements . . . described by the applicant(s) as necessary to practice the
invention . . . [and] a claim which fails to interrelate essential elements of the
invention as defined by applicant(s) in the specification may be rejected”
under 35 U.S.C. § 112, second paragraph, as indefinite. MPEP § 2172.01
also references MPEP § 2164.08(c), which states that “[b]road language in
the disclosure, including the abstract, omitting an allegedly critical feature,
tends to rebut the argument of criticality.”
The Examiner does not indicate any essential features with respect to
the step of generating which have been omitted, and the Examiner does not
point to any portion of the Specification describing such essential features.
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Further, we do not find that Appellant’s Specification describes any essential
features with respect to the step of “generating . . . a decision reference”
(limitation (c)) which have been omitted from claim 36. Instead,
Appellant’s Specification broadly describes that a user indicates a need for
inclusion of a decision service, and the system, responsive to this user input,
“generate[s] a decision reference” within the business process at a location
specified by the user. Spec. ¶¶ 64–65. This broad disclosure for generating,
which does not set forth any critical features, tends to rebut the Examiner’s
finding of criticality. See MPEP § 2164.08(c) (“Broad language in the
disclosure, including the abstract, omitting an allegedly critical feature, tends
to rebut the argument of criticality.”).
In the Answer, the Examiner further explains that the Specification
does not state what the decision reference is, other than programmatic code,
that it does not indicate or explain how the programmatic code is generated,
or where in the process it is generated, but only that it is somehow
generated. Ans. 3–4 (citing Spec. ¶ 33). However, the Specification
provides that the decision reference represents a “decision that is
incorporated into the business process . . . at a particular insertion point, or
location, within the business process.” Spec. ¶ 33; see also id. ¶¶ 35 (“a
decision (or decision reference)”), 45 (“decision references (e.g.,
decisions)”), 65 (“[t]he decision reference can serve as an indicator that a
decision service . . . is to be called or invoked when the business process is
executed”). To the extent that claim 36 covers a wide variety of methods for
generating a decision reference, this issue relates to the breadth of the claim,
and not to indefiniteness. See In re Miller, 441 F.2d 689, 693 (CCPA 1971)
(“Breadth is not . . . indefiniteness.”).
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The Examiner further rejects claim 36 because limitation (i) (i.e.,
“creating of the programmatic representation of the business process is
decoupled from the creating of the decision service”) “does not clearly
establish steps and is inherently vague and indefinite.” Final Act. 5. The
Examiner asks whether “the term ‘decouple’ refer[s] to an active set of steps
that are necessary to ‘decouple’ one tool from another, or . . . as an attribute
or characteristic that the tools are ‘separate.’” Id.
Yet, Appellant’s Specification describes at paragraph 23 that the
“business process can be executed in a computing environment that is
separate from the computing environment in which the decision service(s)
are implemented. This decoupling, or separation, of business processes from
decision services allows business processes to be defined more readily.” At
paragraph 25, the Specification describes that the application development
environment is independent of the decision development environment. At
paragraph 30, the Specification further describes that decision services are
developed using decision service tool 115 instead of business process
development (BPD) tool 105, and that the users of decision service tool 115
are different from those of BPD tool 105.
We agree with Appellant that one of skill in the art would understand,
in light of the Specification, that the creation of programmatic representation
of the business process is decoupled from the creation of the decision
services. Reply Br. 4. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for definiteness under 35
U.S.C. § 112, second paragraph (now § 112(b)), is whether “those skilled in
the art would understand what is claimed when the claim is read in light of
the specification.”).
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Therefore, we do not sustain the Examiner’s rejection of independent
claim 36 and its dependent claims under 35 U.S.C. § 112, second paragraph.
Patent Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
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In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to “generating a decision description
file using a business process development tool stored within memory
elements of a computer hardware system” or to “using decision management
for business process application development.” Final Act. 6 (citing Spec.
¶ 3). The Examiner determined that this concept is a certain method of
organizing human activity, i.e., an abstract idea. Id. The Examiner found
that the claims are similar in character to other claims that the courts have
held to be abstract, such as concepts related to generating and organizing
information. Id. (citing cases). The Examiner also determined that the
claims do not include additional elements that are sufficient to amount to
significantly more than the abstract idea itself. Id. at 7–11.
After Appellant’s briefs were filed and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised
Guidance”). That guidance revised the USPTO’s examination procedure
with respect to the first step of the Mayo/Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
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applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id.2,3
Step One of the Mayo/Alice Framework (Revised Guidance, Step 2A, Prong
One)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the Revised Guidance (i.e., Step 2A), is a two-prong test; in
Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity; and (3) mental processes. Revised Guidance, 84 Fed. Reg. at 54. If
so, we next consider whether the claim includes additional elements, beyond
the judicial exception, that “integrate the [judicial] exception into a practical
application,” i.e., that apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the judicial
exception (“Step 2A, Prong Two”). Id. at 54–55. Only if the claim

2 The Revised Guidance supersedes MPEP § 2106.04(II) and also
supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet
Identifying Abstract Ideas.” See Revised Guidance, 84 Fed. Reg. at 51
(“Eligibility-related guidance issued prior to the Ninth Edition, R-08.2017,
of the MPEP (published Jan. 2018) should not be relied upon.”).
Accordingly, Appellant’s arguments challenging the sufficiency of the
Examiner’s rejection will not be addressed to the extent those arguments are
based on now superseded USPTO guidance.
3 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the Revised
Guidance in response to comments solicited from the public.
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(1) recites a judicial exception and (2) does not integrate that exception into
a practical application do we conclude that the claim is “directed to” the
judicial exception, e.g., an abstract idea. Id.
We are not persuaded by Appellant’s arguments that the Examiner
erred in determining that claim 36 is directed to an abstract idea. Appeal
Br. 11–18; see id. at 11–13 (contending that the Examiner has not identified
an abstract idea to which the claimed invention is directed, improperly
characterized the claims, and overgeneralized the claimed invention). The
Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-
one filter to claims, considered in light of the specification, based on
whether ‘their character as a whole is directed to excluded subject matter.’”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific
improvement in relevant technology or on a process that itself qualifies as an
“abstract idea” for which computers are invoked merely as a tool. See id.
at 1335–36. Here, it is clear from the Specification (including the claim
language) that the claims focus on an abstract idea, and not on any
improvement to technology and/or a technical field.
The Specification is titled “EXTERNALIZED DECISION
MANAGEMENT IN BUSINESS APPLICATIONS,” and relates generally
to “business process applications and, more particularly, to using decision
management for business process application development.” Spec. ¶ 3.
In general, a business process is a collection of related, structured activities
or tasks that produce a specific service, product, or achieve a particular goal.
Id. ¶ 27. A business process typically includes various decision points at
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which a decision is made that can impact subsequent activities of the
business process. See id. And business process applications often rely upon
different decision making technologies for making these decisions. Id. ¶ 1.
One example of a business process is handling of an insurance claim, and an
exemplary decision point in that process is whether there is any potentially
deceptive activity taking place in relation to the claim. Id. ¶ 29.
Conventional business process application systems fully specify the
decision within the business process development (BPD) tool itself. Id.
¶ 44. Accordingly, the developer responsible for creating the business
process also must select the appropriate technology and tool for
implementing the decision making process (e.g., some decision making
technologies are better suited than others, depending on the type of decision
being made). Id. The developer also would need to define a specific
interface for the technology used by the decision making to interact with the
business process. Id. Put simply, the developer would need to be familiar
with the decision making technologies. See id. ¶ 1 (describing that the
“range of available complex decision making technologies [includes]
business rules, predictive analysis, analytics, business intelligence, [and]
reporting tools”). The decision within the conventional business process
application system would be specified in the form of a general task; it would
not be correlated with any attributes indicating the type of result returned by
the decision server or the manner in which the result is consumed by the
business process. Id. ¶ 44.
A problem with this conventional approach is that users of decision
making technologies (e.g., business rules, predictive analysis, analytics,
business intelligence, reporting tools) are typically subject matter experts;
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whereas, business process application developers are typically generalists.
Id. ¶¶ 2, 30. As a result, the people (e.g., software developers, business
analysts) developing the business process applications are typically
unfamiliar with decision making technology, making the integration of
decision making technologies into business applications challenging. Id.
¶¶ 1–2.
The claimed invention ostensibly addresses these issues by separating
business process creation from the decision making process. Id. ¶ 20.
Namely, “modeling of the business process is independent and separate from
modeling of the decision.” Id. “This decoupling, or separation, of business
processes from decision services allows business processes to be defined
more readily.” Id. ¶ 23. Using business process development tool 105, a
business processes is created. Id. ¶¶ 21, 52. “When a decision is required in
the context of the business process being created, the decision can be defined
in terms of various attributes including . . . a decision mode.” Id. ¶ 21; see
also id. ¶ 34. “[T]he decision mode indicates how the result of the decision
is consumed by the business process when executed.” Id. ¶ 21. Exemplary
modes include “logical,” “recommendation,” or “human centered” (id. ¶ 35),
where a decision service with a decision mode of “logical” returns a binary
(e.g., yes or no) response (id. ¶ 36); a mode of “recommendation” returns a
value within a range of possible values (id. ¶ 37); and a mode of “human
centered” returns a result that is interpreted by a human being, such as a
table or graph (id. ¶ 41).
BPD tool 105 generates a description of the decision needed, and this
description is provided to developers of the decision service for
implementation. Id. ¶ 22. Specifically, as shown in Figure 1, BPD tool 105
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includes a decision support interface 110 “configured to generate a decision
description file 120 for each of the decision references (e.g., decisions) that
are defined or inserted into the business process being developed.” Id. ¶ 45.
Decision description file 120 provides an abstract description 130 of the
decision to be generated, and does not explicitly define what and how the
decision is to be made. Id. ¶ 45, Fig. 1. Users of decision service tool 115
consult a directory to look-up decision description files 120 that need to be
fulfilled and begin development of a decision service in fulfillment of a
particular decision description file in accordance with attributes
(requirements) specified in the decision description file. Id. ¶ 53.
Consistent with this disclosure, claim 36 recites a method that
performs the following steps: (1) “creating . . . a . . . representation of a
business process” (limitation (a)); “identifying, within a . . . representation of
a business process, an insertion point corresponding to a decision to be
performed during the business process” (limitation (b)); “generating, within
the . . . representation of the business process and at the insertion point, a
decision reference” (limitation (c)); “presenting . . . a plurality of different
decision modes capable of being associated with the decision”
(limitation (d)); “receiving, from a user . . . , user input that selects one of the
plurality of different decision modes” (limitation (e)); “generating . . . a
decision description file that associates the decision with the selected one of
the plurality of different decision modes” (limitation (f)); wherein “the
decision description file is configured to be used to select a decision service
that implements the decision” (limitation (h)); and “the creating of the . . .
representation of the business process is decoupled from the creating of the
decision service” (limitation (i)). These limitations, when given their
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broadest reasonable interpretation, recite a method for developing a model
for a business process that integrates with a separate decision making model.
See, e.g., Spec. ¶¶ 3, 20 (“modeling of the business process is independent
and separate from modeling of the decision”); see also Appeal Br. 14 (“the
claimed invention involves decoupling, in the technology, the creation of the
programmatic representation of the business process from the creation of the
decision service (i.e., both being different types of programming)”); Final
Act. 6 (claimed invention is “directed ‘to using decision management for
business process application development....’ (Specification [0003])”). The
method, thus, manages relationships or interactions between people,
including following rules or instructions, which is a certain method of
organizing human activity, i.e., an abstract idea. See Revised Guidance,
84 Fed. Reg. at 52.
Claim 36 contemplates that the claimed method is computer-
implemented using a business process development tool stored within
memory elements of a computer hardware system. Nonetheless, the steps of
the method are acts that could be performed by a human, e.g., mentally or
manually, using pen and paper. For example, creating a representation of a
business process (limitation (a)) involves creating a collection of related,
structured activities or tasks that produce a specific service, product, or
achieve a particular goal. See Spec. ¶ 27. Identifying an insertion point
(limitation (b)) is equivalent to finding a point in the business process that
requires a decision. And limitations (c)–(i) relate generally to collecting and
generating information to create a decision description file that is intended
for use by another human (e.g., a subject matter expert) to select a decision
service that implements the decision. Simply put, claim 36 recites a mental
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process, i.e., a concept performed in the human mind, including an
evaluation or judgment, and therefore, an abstract idea. See Revised
Guidance, 84 Fed. Reg. at 52; CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372 (Fed. Cir. 2011) (holding that method steps that can be
performed in the human mind, or by a human using a pen and paper, are
unpatentable mental processes). See also Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (explaining that the Federal
Circuit treats “analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category”); Versata Dev. Grp., Inc. v. SAP
Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined
claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.”).
Appellant argues that the Examiner improperly characterized the
claim invention as “using decision management for business process
application development,” because this language is not recited in the claims
and does not accurately reflect what the claimed invention is directed to.
Appeal Br. 12. Appellant also argues that the “Examiner’s alleged abstract
idea involves only the seventh of seven different operations recited in
claim 36.” Id. at 13 (emphasis omitted). As an initial matter, there is no
requirement that the Examiner’s formulation of the abstract idea must copy
the claim language. An abstract idea can be described at different levels of
abstraction. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240–41 (Fed.
Cir. 2016).
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As set forth above, the abstract idea covers limitations (a) through (i),
as recited in claim 36. In our view, the characterization of claim 36 is fully
consistent with the Specification, as described above. For example,
limitation (a) describes creating the business process model (or
representation), and the remaining limitations describe integrating the
business process with a decoupled decision service. For example, a location
in the business process for the decision is identified for the decision
(limitation (b)), a decision reference that invokes a decision description file
is generated (limitations (c) and (g)). The BPD tool presents a plurality of
different decision modes capable of being associated with the decision
(limitation (d)), and receives a selection of a decision mode from the user
(limitation (e)). Finally, a decision description file that associates the
decision with a mode is generated, the file being configured to be used to
select a decision service and being decoupled from creating the business
process model (limitations (f), (h), (i)).
Step One of the Mayo/Alice Framework (Revised Guidance, Step 2A, Prong
Two)
Having concluded that claim 36 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two).
Beyond the abstract idea, claim 36 additionally recites that the
claimed method is “computer-implemented” using a “business process
development tool” stored within “memory elements” of a “computer
hardware system.” The claimed representation of a business process is a
“programmatic representation,” and the decision reference is “programmatic
code within the programmatic representation of the business process.”
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However, these elements, as the Examiner observed, are recited at a high
level of generality and described as such in the written disclosure. Final
Act. 9–10 (citing Spec. ¶¶ 6, 13); see also Spec. ¶¶ 14–19, 59–62. We find
no indication in the Specification that the operations recited in claim 36
require any specialized computer hardware or other inventive computer
components, i.e., a particular machine, invoke any assertedly inventive
programming, or that the claimed invention is implemented using other than
generic computer components to perform generic computer functions. See
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) (“[A]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in technology and/or a technical field to the claimed invention
or that otherwise indicates that the claimed invention integrates the abstract
idea into a “practical application,” as that phrase is used in the Revised
Guidance.4

4 The Revised Guidance references MPEP §§ 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. Revised Guidance, 84 Fed. Reg. at 55. If
the recited judicial exception is integrated into a practical application, as
determined under one or more of these MPEP sections, the claim is not
“directed to” the judicial exception.
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Appellant acknowledges that the claimed invention “is within the
‘field’ of business process management/development,” but contends that this
concept “is not what the claimed invention is directed to.” Appeal Br. 14.
Instead, Appellant contends that the “claimed invention involves decoupling,
in the technology, the creation of the programmatic representation of the
business process from the creation of the decision service (i.e., both being
different types of programming).” Id. Yet, this improvement, as set forth in
claim 36 in light of the Specification, is an improvement to a process that is
itself the abstract idea, not any technological improvement.
For example, Appellant’s Specification describes that users of a BPD
tool specify attributes of a required decision in a decision description
file 120, and pass the decision file to users of a decision service tool 115 for
fulfillment. Spec. ¶ 53. In this way, “the particular technology and tool for
implementing the decision service can be selected by the person that is
responsible for developing the decision service and that has expertise in that
area, as opposed to the persons responsible for development of the business
process.” Id. ¶ 55. “[The] expert charged with developing the decision
service . . . can review decision description file 120 and select the particular
technology to be used in creating the decision service, e.g., business rules,
predictive analysis, analytics, business intelligence, reporting tools . . ., and
also the particular tool to be used as decision service tool 115.” Id. The
expert models the decision service, gathers any additional details of the
business requirements that may be needed to implement the decision service,
and, once generated, either publishes the resulting decision service in a
decision service registry or provides the decision service for import into the
business application. Id. ¶¶ 56–57.
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Put simply, the claimed invention improves the conventional process
for developing a business process using decision service such that the person
modeling the decision service differs from the person modeling the business
process. Therefore, to the extent the claimed invention provides an
improvement, that improvement does not concern an improvement to
computer capabilities, but instead relates to an alleged improvement in
process for developing a business process model that leverages a decision
service — a process in which a computer is used as a tool in its ordinary
capacity.
Appellant argues that “the claimed invention provides advantages
over the currently [sic] technological process used to generate programmatic
representations of a business process.” Appeal Br. 20–21. Appellant asserts
that
the claimed invention involves provides [sic] a
process involving the creation of two linked data
structures (i.e., the programmatic representation of
the data structure and decision description file) that
are used to create a computer-implemented service
(i.e., the “decision service[”]) in a manner that
provides distinct improvement over the prior art.
Id. at 22. Yet, claim 36 recites “generating . . . a decision reference”
(limitation (c)), where “the decision reference is programmatic code within
the programmatic representation of the business process that invokes the
decision description file” (limitation (g)). To the extent that Appellant
argues that this linking somehow amounts to a technological improvement
that integrates the abstract idea into a practical application, such
improvement is not reflected in the claim language.
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In this way, claim 36 is similar to the claims at issue in Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332 (Fed. Cir. 2017).
In that case, the claims recited systems and methods for preserving
compatibility between XML documents after they had been edited by
different users. Id. at 1339–40. Specifically, the claims recited presenting a
user with a second document — a “dynamic document” — containing data
extracted from an original XML document. Id. at 1339. A user could edit
the data displayed in the dynamic document, and the changes would be
“dynamically propagated” into the original XML document. Id. There, the
Federal Circuit concluded that the claims were, “at their core, directed to the
abstract idea of collecting, displaying, and manipulating data.” Id. at 1340.
Here, claim 36 generates a decision reference at an insertion point of
the business process corresponding to a decision to be performed, and
obtains data to create a decision description file that is to be used to select a
decision service. The decision reference is programmatic code within the
programmatic representation that invokes the decision description file.
Thus, claim 36 encompasses generating any programmatic code that can
invoke a decision description file. See id. at 1342 (“[T]he claim language
here provides only a result-oriented solution, with insufficient detail for how
a computer accomplishes it. Our law demands more.”).
At best, claim 36 narrows the abstract idea by applying it to a
particular technological environment (i.e., using a computer-implemented
business process development tool). But the Court made clear in Alice that a
particular technological environment is insufficient to transform an
otherwise patent-ineligible abstract idea into patent-eligible subject matter.
See Alice Corp., 573 U.S. at 222.
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To the extent that Appellant attempts to draw an analogy between
claim 36 and the patent-eligible claims in McRO, Inc. v. Bandai Namco
Games Am., Inc., 837 F.3d 1299 (Fed. Cir. 2016), we are not persuaded. See
Appeal Br. 21–22. In McRO, the claims at issue were directed to a
technological improvement over existing, manual 3-D computer animation
techniques. See McRO, 837 F.3d at 1316. Here, Appellant does not persuade
us that claim 36 recites more than an improvement in wholly abstract ideas
that uses computers as tools.
To the extent that Appellant asserts that the claimed invention is
directed to an improvement in computer technology because it creates a
description file and uses the description file in decoupling the creation of
programmatic representation of the business process and the decision
services implemented (see Reply Br. 7), we are not persuaded for reasons
similar to those described above with respect to the generating a decision
reference. Claim 36 recites “generating, using [the] business process
development tool, a decision description file” (limitation (f)). But any and
all means for generating can be used to “generate” the decision description
file. And the description file is simply information (i.e., one or more
attributes for the decision service) intended for review by an expert charged
with developing the decision service. Spec. ¶ 55. Claim 36 is aspirational in
nature and devoid of implementation details or technical description to
indicate that the claim as a whole is directed to something other than the
abstract idea.
We also are not persuaded by Appellant’s argument regarding
preemption. Appeal Br. 23–24. Although the Supreme Court has described
“the concern that drives [the exclusion of abstract ideas from patent-eligible
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subject matter] as one of pre-emption,” Alice Corp., 573 U.S. at 216,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption may signal
patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility.” Id.
We conclude, for the reasons outlined above, that claim 36 recites a
certain method of organizing human activity and a mental process, i.e., an
abstract idea, and that the additional elements recited in the claim are no
more than generic computer components used as tools to perform the recited
abstract idea. As such, they do not integrate the abstract idea into a practical
application. See Alice Corp., 573 U.S. at 223–24 (“[W]holly generic
computer implementation is not generally the sort of ‘additional featur[e]’
that provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’” (alterations in
original) (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the
Examiner that claim 36 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 36 is directed to an abstract idea, we next consider under Step 2B of
the Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 36 includes additional elements or a combination of elements
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that provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself. Revised
Guidance, 84 Fed. Reg. at 56.
Appellant argues that “while the Examiner has identified some of the
additional limitations beyond the Examiner’s alleged abstract idea, the
Examiner’s analysis has not identified all of the additional limitations.”
Appeal Br. 19 (emphasis omitted). However, as described above, the only
limitations beyond the abstract idea include the claimed “business process
development tool” stored within “memory elements” of a “computer
hardware system,” and that the claimed representation of a business process
is a “programmatic representation” and, similarly, that the decision reference
is “programmatic code within the programmatic representation of the
business process.” However, these elements are generic computer elements.
To the extent that Appellant argues that claim 36 is patent eligible
because the claim is novel and nonobvious over the prior art, Appellant
misapprehends the law. See Appeal Br. 22 (arguing that the claimed
invention provides a “distinct improvement over the prior art”); see also
Reply Br. 6 (pointing to a lack of a prior art rejection), 7 (asserting that the
creation and use of a decision description file is novel). Neither a finding of
novelty nor a non-obviousness determination automatically leads to the
conclusion that the claimed subject matter is patent eligible. Although the
second step in the Mayo/Alice framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or non-
obviousness, but, rather, a search for “an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’”
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Alice Corp., 573 U.S. at 217–18 (alteration in original). See Mayo, 566 U.S.
at 90; see also Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (“The
‘novelty’ of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the § 101 categories of possibly patentable subject matter.”).
Here, Appellant does not identify, and we do not find, any additional
limitation or combination of limitations beyond the abstract idea that was not
well-understood, routine and conventional in the field at the time of filing.
See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir.
2018) (“It has been clear since Alice that a claimed invention’s use of the
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention ‘significantly more’ than that ineligible concept.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 36 under 35 U.S.C. § 101.
Appellant purports to argue the dependent claims separately. See
Appeal Br. 24–25; see also Reply Br. 8–9. Yet, aside from asserting that the
Examiner did not address the dependent claims individually, Appellant does
not offer separate arguments for the patent-eligibility of claims 37–45.
Claim 37, for example, further recites that “the decision service is created
using a decision service tool separate from the business process development
tool.” The claim language fails to recite any technical details regarding how
to create the decision service that could indicate any technological
improvement.
Therefore, we sustain the Examiner’s rejection of dependent claims
37–45 under 35 U.S.C. § 101.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
36–45 112, second
paragraph
Indefiniteness 36–45
36–45 101 Eligibility 36–45
Overall
Outcome
36–45
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