International Business Machines Corporation

Patent Trials and Appeals Board

May 13, 2021

2020006235 (P.T.A.B. May. 13, 2021)

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.
15/218,283 07/25/2016 Xavier Ceugniet GB920150212US1 1073
138363 7590 05/13/2021
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
EXAMINER
GUILIANO, CHARLES A
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
05/13/2021 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):
patdocket@winstead.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte XAVIER CEUGNIET, ALAIN CHABRIER, and
STEPHANE MICHEL

_____________

Appeal 2020-006235
Application 15/218,283
Technology Center 3600
____________

Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
MICHAEL T. CYGAN, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–12. 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) (2020). According to Appellant, the real party in interest
is International Business Machines Corporation. See Appeal Br. 1.
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STATEMENT OF THE CASE
Invention
Embodiments of the disclosed and claimed invention on appeal relate
to “a computer implemented method, a computer system and a computer
program product for generating an optimization model.” Spec. ¶ 1.

Representative Claim 1
1. A computer implemented method for generating an
optimization model, the method comprising:

receiving a prescriptive model comprising a structured
set of data and one or more instances of templates of a technical
and/or business prescriptive domain, the instances of the
templates defining goals and/or constraints for the structured set
of data, wherein the business prescriptive domain extends the
technical prescriptive domain defining a generic optimization
problem and the business prescriptive domain defines a more
specific business problem which is an implementation of the
generic optimization problem defined in the technical
prescriptive domain from which the business prescriptive
domain extends;

translating, by a processor, the prescriptive model into a
technical prescriptive model using a set of mapping rules to
translate the instance(s) of the templates of the business
prescriptive domain into instance(s) of the templates of the
technical prescriptive domain from which the business
prescriptive domain extends, wherein each mapping rule
defines how an instance of a template of the business
prescriptive domain is translated into an instance of a template
of the related technical prescriptive domain;

translating, by the processor, the technical prescriptive
model into an optimization model by executing an optimization
model generator associated to the technical prescriptive model,
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wherein the translations expose a user to natural language
definitions of business concepts, business constraints and
business goals thereby eliminating complex parameterization of
technical goals and constraints required to generate
optimization models, wherein the optimization model generator
is implemented using a definition in the technical prescriptive
domain of constraints and goal and constraint templates thereby
enabling the optimization model generator to depend on a class
of problems to solve a business problem thereby increasing an
ability to use the technical prescriptive domain as a target of
multiple business prescriptive domains;

wherein the translation of the prescriptive model into the
technical prescriptive model and the translation of the technical
prescriptive model into the optimization model allow a non-
expert to add new business prescriptive domains without having
to implement complex generation of optimization models which
require in-depth operational research expertise;

solving, by the processor, the optimization model using
an optimization engine; and

presenting to the user an output defining a solution from
the solved optimization model comprising computed decision
variables mapped to business decisions, wherein the solution
satisfies all the goals and constraints within the prescriptive and
optimization models, wherein the output is presented on a
graphical user interface of a computing device, wherein the user
selects goals and constraints which are presented as part of the
output via the graphical user interface, wherein the output
shows a current summary of the generic optimization problem
based on the user’s selected goals and constraints, wherein as
the user makes choices around different goals and constraints
via the graphical user interface, the prescriptive model is
adapted dynamically and the prescriptive model will
dynamically change a representation of data in the graphical
user interface.

Appeal Br. 72–73 (Claims App.).
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Evidence Relied Upon by the Examiner
Name Reference Date
de Souza et al.
(“Souza”) US 2005/0038780 A1 Feb. 17, 2005
Trenkov et al.
(“Trenkov”) US 2016/0004973 A1 Jan. 7, 2016

Table of Rejections
Rejection Claims Rejected 35 U.S.C.
§
Reference(s)/Basis
A 1–12 101 Eligibility
B 1–3, 5–7, 9–11 102(a)(1) Souza
C 4, 8, 12 103 Souza, Trenkov

ISSUES AND ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. To the extent Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are forfeited
or waived.2 See, e.g., 37 C.F.R. § 41.37(c)(1)(iv). Throughout this opinion,

2 See In re Google Technology Holdings LLC, 980 F.3d 858, 862 (Fed. Cir.
2020) (some internal citation omitted):
It is well established that “[w]aiver is different from forfeiture.”
United States v. Olano, 507 U.S. 725, 733 (1993). “Whereas
forfeiture is the failure to make the timely assertion of a right,
waiver is the ‘intentional relinquishment or abandonment of a
known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458, 464
(1938)) (additional citations omitted). The two scenarios can
have different consequences for challenges raised on appeal, id.
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we give the claim limitations the broadest reasonable interpretation (BRI)
consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997). We highlight and address specific findings and arguments
for emphasis in our analysis below.

Rejection A of claims 1–12 under 35 U.S.C. § 101
USPTO 35 U.S.C. § 101 MPEP Guidance
In January and October of 2019, the U.S. Patent and Trademark
Office (“USPTO”) published revised guidance on the application of
35 U.S.C. § 101.3 We note the USPTO current eligibility guidance is found
in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of
Patent Examination Procedure (“MPEP”), and particularly within Sections
2103 through 2106.07(c). Accordingly, all references to the MPEP
throughout this Decision are to the Ninth Edition, Revision 10.2019 (Last
Revised June 2020), unless otherwise indicated.
Under MPEP § 2106, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or
mental processes) (“Step 2A, Prong One”); and

at 733–34, and for that reason, it is worth attending to which label
is the right one in a particular case.
3 See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) (“2019 Revised Guidance”) and USPTO, October 2019
Update: Subject Matter Eligibility (the “October 2019 Update”). “All
USPTO personnel are, as a matter of internal agency management, expected
to follow the guidance.” 84 Fed. Reg. at 51; October 2019 Update at 1.
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(2) additional elements that integrate the judicial exception into a
practical application (“Step 2A, Prong Two”).4

MPEP § 2106, Step 2A, Prong One
The Judicial Exception
Under MPEP § 2106.04(a), the enumerated groupings of abstract
ideas are defined as follows:
(1) Mathematical concepts – mathematical relationships,
mathematical formulas or equations, mathematical
calculations (see MPEP § 2106.04(a)(2), subsection I);
(2) 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) (see MPEP § 2106.04(a)(2), subsection II); and
(3) Mental processes – concepts performed in the human mind
(including an observation, evaluation, judgment, opinion)
(see MPEP § 2106.04(a)(2), subsection III).
In the Final Action, under Step 2A, Prong One, the Examiner
concludes that claim 1 recites a mental process, as defined under MPEP §
2106.04(a)(2), subsection III:

4 “Examiners evaluate integration into a practical application by:
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (2) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.” MPEP § 2106.04(d)(II).
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As a whole, in view of the claim limitations, but for the computer
components and systems performing the claimed functions, the
broadest reasonable interpretation of the recited receiving goals
and constraints of a business optimization problem, translating
the received information into an optimization model, solving the
optimization model, and presenting the output of the solved
model, including presenting dynamically updated output based
on a user’s choice of goals and constraints, could all be
reasonably interpreted as a human making observations of
regarding the goals and constraints of a business optimization
problem, a human using their mind to perform evaluations and
use judgment based on the observations to translate and solve the
optimization model, and a human providing an opinion
outputting the solution to the optimization problem using a pen
and paper, including a human presenting dynamically updated
output based on a user's choice of goals and constraints using a
pen and paper.
Final Act. 35 (emphases added).
Appellant disagrees, and contends:
Appellant’s claimed invention is not a purely mental process that
could otherwise be performed in any reasonable amount of time
and with any reasonable expectation of accuracy without the use
of a computer. That is, Appellant’s claimed invention cannot be
performed in any reasonable amount of time and with any
reasonable expectation of accuracy without the use of a
computer.
Appeal Br. 9 (emphasis omitted).
The Examiner further explains in the Answer:
The claims are drawn to processing messages that are sent by
market participants using a first and second processor.
According to the 2019 PEG, “commercial interactions” or “legal
interactions” include subject matter relating to agreements in the
form of contracts, legal obligations, advertising, marketing or
sales activities or behaviors, and business relations. According
to the 2019 PEG, “managing personal behavior or relationships
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or interactions between people” includes social activities,
teaching, and following rules or instructions.
Ans. 5 (emphases added).

We agree with the Examiner that all claims 1–12 recite steps or
functions that could be performed alternatively by a person as a mental
process, as defined under MPEP § 2106.04(a)(2), subsection III. For
example, we conclude at least the following limitations could be performed
alternatively as a mental process: “translating . . . the prescriptive model
into a technical prescriptive model . . . translating the technical prescriptive
model into an optimization model . . . [and] solving . . . the optimization
model.” Claim 1 (emphasis added).5 We note similar limitations of
commensurate scope are recited in remaining independent claims 5 and 9.
We additionally determine that all claim limitations that include a
“business prescriptive domain” or a “business problem” or an “optimization

5 If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under § 101. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372–73 (Fed. Cir. 2011); “That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.” CyberSource, 654
F.3d at 1375. See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1146–47 (Fed. Cir. 2016). Moreover, “[u]sing a computer to
accelerate an ineligible mental process does not make that process patent-
eligible.” Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada (U.S.),
687 F.3d 1266, 1279 (Fed. Cir. 2012); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“relying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.”).

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model” fall into the category of certain methods of organizing human
activity, including fundamental economic principles or practices, such as
marketing and sales activities and business relations. See MPEP
§ 2106.04(a)(2), subsection II). Cf. Spec. ¶ 26 describing business domain
32 and Domain business concepts including the “cSalesRep” category and
the “Sales representative” structure.”
To the extent that the Examiner additionally concludes under Step 2A,
prong 1, that the claims describe a “mathematical algorithm that a human of
ordinary skill in the art commonly performs with their mind and using a pen
and paper to solve and present the solution to an optimization problem”
(Ans. 7), we note that the court in In re Maucorps (609 F.2d 481, 482
(CCPA 1979)) found a method of using “equations and data described in the
specification” to “arrive[] at the optimum business organization” to be
ineligible subject matter.
Analogous to Appellant’s claimed invention, the claims in Maucorps
were directed to a computer-implemented model of a sales organization that
determined “the optimum number of times a sales representative for a
business should visit each customer over a period of time[,] [t]he optimum
number of sales representatives the organization should have, and the
optimum organization of sales representatives.” Id.
MPEP § 2106.04(a) guides that “[i]f the identified limitation(s) falls
within at least one of the groupings of abstract ideas, it is reasonable to
conclude that the claim recites an abstract idea in Step 2A Prong One.” In
such case, “[t]he claim then requires further analysis in Step 2A Prong Two,
to determine whether any additional elements in the claim integrate the
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abstract idea into a practical application, see MPEP § 2106.04(d).” MPEP
§ 2106.04(a).
Because we conclude that all claims 1–12 recite an abstract idea, as
identified above, under Step 2A, Prong One, we proceed to Step 2A, Prong
Two, in which we apply the guidance set forth under MPEP § 2106.04(d).6

Step 2A, Prong Two Under MPEP § 2106.04(d),
Integration of the Judicial Exception into a Practical Application
Limitations that are indicative of integration into a practical
application under MPEP § 2106.04(d) include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article
to a different state or thing — see MPEP § 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception 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
§ 2106.05(e).

In contrast, limitations that are not indicative of integration into a
practical application include:

6 We note that each dependent claim includes all the limitations of the
claims from which it depends. See 35 U.S.C. § 112(d).
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1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely including instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
See MPEP § 2106.04(d)(I) (Describing Step 2A, Prong Two).

Additional Limitations
Applying the USPTO guidance under MPEP § 2106.04(d), we
consider whether there are additional elements set forth in the claims that
integrate the judicial exception into a practical application.
The Examiner finds that the judicial exception is not integrated into a
practical application. Final Act. 35. The Examiner explains:
each of the additional elements are computing elements recited
at high level of generality implementing the abstract idea on a
computer (i.e. apply it), and thus, are no more than applying the
abstract idea with generic computer components. Further, the
recitations of on, in, and via the graphical user interface are
nothing more than mere data gathering and pre and post-solution
activity, which is insignificant extrasolution activity. Moreover,
aside from the aforementioned additional elements, the
remaining elements of dependent claims 2–4, 6–8, & 10–12 do
not integrate the recited abstract idea into a practical
application because these claims merely recite further limitations
that provide no more than simply narrowing the recited abstract
idea.
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Final Act. 36. (emphasis added).
Mere Instructions to Apply an Exception Under MPEP 2106.05(f)
In order to be patent-eligible, the element[s] additional to the
identified abstract idea must amount to more than “an instruction to apply
the abstract idea using a generic computer” to render the claim patent-
eligible. Alice Corp., 573 U.S. at 223. Here, the Specification supports the
Examiner’s finding that the claims are mere instructions to implement the
identified abstract idea on a generic computer. We note that claims 1–12
recite functions or steps that are intended to be implemented by a computer
and/or a computer system including one or more processors that are
described generically in the Specification. For example, the processors may
be of “a general purpose computer, a special purpose computer, or other
programmable data processing apparatus.” Spec. ¶ 61. Paragraph 20 of the
Specification also describes, in pertinent part, the use of a generic processor:
Figure 2 shows a computer system 20 that is used to operate the
expert system 10. The computer system 20 comprises a display
device 22, a processor 24 and a user input device 26. A
computer program product is provided that is stored on a
computer readable medium 28, here a CD-ROM 28. The
computer program product comprises a set of instructions that
are used to control the processor 24. The processor 24 executes
the instructions from the computer program product in order to
operate the expert system 10. The computer system 20 shown
here is a desktop computer; however the functionality provided
by the computer system 20 can also be delivered by a remote
server that comprises a set of distributed components.
Spec. ¶ 20 (emphasis added).

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A further indication that the claim amounts to no more than mere
instructions to implement an abstract idea on a computer is found where a
claim recites only the idea of a solution or outcome, lacking details as to
how the computer reaches that solution or outcome. See Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015) (finding
the claim limitation “maintaining state” described only “the effect or result
dissociated from any method by which maintaining the state is
accomplished”); McRO, Inc. v. Bandai Namco Games America Inc., 837
F.3d 1299, 1312 (Fed. Cir. 2016) (“The abstract idea exception prevents
patenting a result where ‘it matters not by what process or machinery the
result is accomplished.’” (quoting O’Reilly v. Morse, 56 U.S. 62, 113
(1854)) (emphasis added)). Such details may be present where the claim
sets forth rules having “specific, claimed features” that “allow for the
improvement realized by the invention.” McRO, 837 F.2d at 1312 (finding
the rules limiting in that “they define morph weights as a function of the
timing of phoneme sub-sequences,” in contrast to human artist-set morph
weights).
Here, we do not find the rules recited in Appellant’s claimed invention
to have “specific, claimed features” that “allow for the improvement realized
by the invention” in the manner found in McRO. Appellant argues that the
claimed “two step translation process” using a set of mapping rules
“provides simple experience to the end user while allowing the rapid
deployment of new business domains.” Reply Br. 4–5. However, Appellant
does not explain how the claimed rules themselves are specific so as to allow
for that improvement. Nor does Appellant point to specifics of the rules that
are performed in a different manner than by humans, as occurred in McRO.
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In view of the above analysis, we find Appellant’s claims 1–12
amount to no more than mere instructions to implement the identified
abstract idea on a computer. See MPEP § 2106.05(f).

Extra- or Post-Solution Activities Under MPEP § 2106.05(g)
“[T]he prohibition against patenting abstract ideas ‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or [by] adding ‘insignificant post[-]solution
activity.’” Bilski v. Kappos, 561 U.S. 593, 610–12 (2010) (quoting
Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
Here, we find independent claim 1 recites one or more additional
limitations that are extra-solution activities the courts have determined to be
insufficient to transform judicially excepted subject matter into a patent-
eligible application. See MPEP § 2106.05(g).
For example, we conclude at least the claim 1 steps of “receiving a
prescriptive model comprising a structured set of data and one or more
instances of templates” and “presenting to the user an output” are merely the
gathering and conveying of data, respectively. See buySAFE v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends
the information over a network—with no further specification—is not even
arguably inventive.”). We note that similar limitations of “receiving” and
“presenting” are also recited in remaining independent claims 5 and 9.

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MPEP § 2106.05(a) — Improvement to the Functionality of a
Computer or Other Technology or Technical Field.
Applying the guidance under MPEP § 2106.05(a), we consider
whether there are any claimed improvements to the functioning of a
computer or to any other technology or technical field.
Appellant recites the claim language, and contends,
as recited in independent claim 1 and similarly in independent
claims 5 and 9, reflect an improvement to another technology
or technical field. As discussed in the 2019 Guidelines, an
additional element that reflects an improvement to another
technology or technical field integrates the exception into a
practical application.
Appeal Br. 15 (emphasis added).
In support, Appellant cites to paragraphs 45–47 of the Specification,
and contends, inter alia:
Hence, the claimed invention addresses the technical problem of
computing optimized business decisions in the technical field of
prescriptive analytics platforms/services. By translating the
prescriptive model into a technical prescriptive model using a set
of mapping rules to translate the instance(s) of the templates of
the business prescriptive domain into instance(s) of the templates
of the technical prescriptive domain from which the business
prescriptive domain extends as well as translating the technical
prescriptive model into an optimization model, the user is
exposed to natural language definitions of business concepts,
business constraints and business goals thereby getting rid of
complex parameterization of the technical goals
and constraints required to generate an optimization model.
Appeal Br. 16–17 (emphasis added).
However, without more argument regarding how paragraphs 45–47 of
the Specification support the claimed subject matter, we find Appellant does
not advance any substantive arguments explaining how the claimed generic
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computer components aid the method, the extent to which the computer aids
the method, or the significance of a computer to the performance of the
method to improve the recited computer components. See MPEP
§ 2106.05(a).
To the extent that Appellant’s computer-implemented method of
claim 1 merely automates a manual approach to translating the recited
models, solving the optimization model, and selecting goals and constraints,
we note that the “‘mere automation of manual processes using generic
computers’ . . . ‘does not constitute a patentable improvement in computer
technology,’” Trading Techs. Int’l v. IBG LLC, 921 F.3d 1378, 1384 (Fed.
Cir. 2019) (quoting Credit Acceptance Corp. v. Westlake Servs., 859 F.3d
1044, 1055 (Fed. Cir. 2017).
Appellant repeatedly argues in the Appeal Brief (8–13) that the
“claimed invention cannot be performed in any reasonable amount of time
and with any reasonable expectation of accuracy without the use of a
computer.” However, our reviewing court provides contrary guidance:
“Using a computer to accelerate an ineligible mental process does not make
that process patent-eligible.” Bancorp, 687 F.3d at 1279; see also OIP
Techs., 788 F.3d at 1363 (“[R]elying on a computer to perform routine tasks
more quickly or more accurately is insufficient to render a claim patent
eligible.”).
Accordingly, on this record, we find that independent claim 1 does not
recite an improvement to the functionality of a computer or other technology
or technical field. See MPEP § 2106.05(a). Remaining independent claims
5 and 9 recite similar limitations of commensurate scope.

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MPEP § 2106.05(b), 2106.05(c)
To the extent that Appellant argues that the method claims on appeal
are tied to a particular machine under MPEP § 2106.05(b), we disagree,
because: (1) we have noted above that paragraphs 20 and 61 of the
Specification describe support regarding the use of generic processors, and
(2) Appellant’s claims only require a generic processor to execute the
program instructions.
But merely adding generic hardware and computer components to
perform abstract ideas does not integrate those ideas into a practical
application. See Alice Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S. 208,
223 (2014) (The “mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.”).
Moreover, Appellant does not advance any arguments explaining how
any of the method claims on appeal transform an article to a different state
or thing under MPEP § 2106.05(c).

MPEP § 2106.05(e) Meaningful Claim Limitations
Appellant contends:
Appellant's claimed invention applies, relies on or uses the
judicial exception in a manner that imposes a meaningful limit
on the judicial exception, such that Appellant’s claimed
invention is more than a drafting effort designed to monopolize
the judicial exception.
Appeal Br. 18 (emphasis added).
However, without more evidence or argument in support, we find
Appellant’s argument is merely conclusory, and is not a substantive rebuttal
that applies the guidance of MPEP § 2106.05(e). Because Appellant does
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not advance any substantive, persuasive arguments explaining how the
judicial exception is applied or used in some meaningful way, as clarified
under MPEP § 2106.05(e), on this record, we are not persuaded the
Examiner erred.
To the extent that Appellant additionally argues that the claims on
appeal do not monopolize any judicial exception, our reviewing court
provides applicable guidance: “[w]hile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“that the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract”).
Accordingly, under Step 2A, Prong Two (MPEP § 2106.05(a)–(c) and
(e)–(h)), we conclude that all claims 1–12 do not integrate the judicial
exception into a practical application.

The Inventive Concept – Step 2B
As set forth under MPEP § 2106.05(d)), only if a claim (1) recites a
judicial exception, and (2) does not integrate that exception into a practical
application, do we then look, under Step 2B, to whether the claim: (3) adds
a specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional activity” in the field; or (4) simply
appends well-understood, routine, conventional activities previously known
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to the industry, specified at a high level of generality, to the judicial
exception.
Under Step 2B, the Examiner finds:
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception under
Step 2B. As noted above, the aforementioned additional
elements beyond the recited abstract idea, as an order
combination, are no more than mere instructions to implement
the idea using generic computer components (i.e. apply it), and
further, these elements also generally link the abstract idea to a
field of use, which is not sufficient to amount to significantly
more than an abstract idea; therefore, the additional elements are
not sufficient to amount to significantly more than an abstract
idea. Additionally, these recitations as an ordered combination,
simply append the abstract idea to recitations of
generic computer structure that performing generic computer
functions that are well-understood, routine, and conventional
in the field as evinced by de Souza, et al. (US 20050038780 A 1)
at [0015], [0028] and Applicant's specification at [0061]
(describing the functions of the invention can be implemented by
instructions provided to a processor of general purpose
computer). Furthermore, as an ordered combination, these
elements amount to generic computer components performing
repetitive calculations, electronic record keeping, and storing and
retrieving information in memory, which, as held by the courts,
are well-understood, routine, and conventional. See MPEP
2106.05(d); July 2015 Update, p. 7.
Final Act. 36 (emphasis added).
The Examiner further finds the additional limitations are analogous to
those well-understood, routine, and conventional computer components that
the Alice Court found not to add significantly more. See Ans. 11. The
Examiner also found the additional elements perform activities that the
courts have held to comprise well-understood, routine, and conventional
activities, such as repetitive calculations, electronic record keeping, and
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storing and retrieving information in memory. Id. at 12 (citing MPEP §
2106.05(d) (discussing specific court cases)).
Appellant asserts that “the Examiner has not provided any evidence
that any of the claim limitations of Appellant's claimed invention are routine,
conventional and well-understood that were previously engaged in by those
in the field of the present invention.” Appeal Br. 18.
In particular, Appellant contends:
the Examiner has failed to perform any such analysis as to
whether an element (or combination of elements) is widely
prevalent or in common use. For example, which of the claim
limitations of Appellant's claimed invention are routine,
conventional and well-understood that were previously engaged
in by those in the field of the present invention?
Appeal Br. 18.
Appellant further asserts:

The Examiner has failed to perform a factual determination as to
whether these claim limitations of Appellant's claimed invention
are routine, conventional and well-understood that were
previously engaged in by those in the field of the present
invention. Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed.
Cir. 2018). As a result, the Examiner has failed to establish a
prima facie case of subject matter ineligibility.
Appeal Br. 19.
We disagree with Appellant. We note Berkheimer was decided by the
Federal Circuit on February 8, 2018. On April 19, 2018, the PTO issued the
Memorandum titled: “Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
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(Berkheimer v. HP, Inc.)” (hereinafter “Berkheimer Memorandum”).7 The
Berkheimer Memorandum provided specific requirements for an Examiner
to support with evidence any finding that claim elements (or a combination
of elements) are well-understood, routine, or conventional.
In particular, the Examiner must find, and expressly support a
rejection in writing, with one or more of the following:
1. A citation to an express statement in the specification or to a
statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional
nature of the additional element(s). . . .
2. A citation to one or more of the court decisions discussed in
MPEP § 2106.05(d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official notice of the
well-understood, routine, conventional nature of the
additional element(s). . . .
Berkheimer Memorandum at 3–4.
Here, the Examiner finds, under Step 2B of the 2019 Memorandum
that the claims:
simply append the abstract idea to recitations of generic
computer structure that performing generic computer functions
that are well-understood, routine, and conventional in the
field as evinced by de Souza, et al. (US 20050038780 A 1) at
[0015], [0028] and Applicant’s specification at [0061]
(describing the functions of the invention can be implemented
by instructions provided to a processor of general purpose
computer).

7 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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Final Act. 36 (emphasis added).
As noted above, the Examiner provides Berkheimer evidence under
categories one and three of the four types of factual evidence acceptable
under the Berkheimer Memorandum at 3–4. See Final Act. 36.
Additionally, the Examiner cites to court cases supporting the proposition
that the additional computer cases amount to well-understood, routine, and
conventional activity, thus providing Berkheimer evidence under category
two. See Ans. 11–12.
However, Appellant has not specifically traversed any of the
Berkheimer evidence provided by the Examiner. Id.
In the Reply Brief (8), Appellant restates that the “Examiner has failed
to perform a factual determination as to whether these claim limitations of
Appellant’s claimed invention are routine, conventional and well-
understood that were previously engaged in by those in the field of the
present invention.” (Emphasis added).
We find Appellant’s argument unavailing, because Appellant again
does not specifically traverse in the Reply Brief the Berkheimer evidence
provided by the Examiner.
For at least the aforementioned reasons, we are not persuaded that
Appellant’s claims do more than simply append well-understood, routine,
and conventional activities previously known to the industry, specified at a
high level of generality, to the judicial exception. As discussed by the
Examiner, an improved abstract idea is still an abstract idea. See Ans. 12
(citing SAP America v. Investpic, LLC., 898 F.3d 1161, 1163 (Fed. Cir.
2018) (stating, “the advance lies entirely in the realm of abstract ideas, with
no plausibly alleged innovation in the non-abstract application realm. An
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advance of that nature is ineligible for patenting.”); see Mayo, 566 U.S. at
90; see also Synopsys, 839 F.3d at 1151 (“[A] claim for a new abstract idea
is still an abstract idea.”) (emphasis omitted).
Moreover, because Appellant does not advance substantive,
persuasive arguments regarding any claimed non-conventional and non-
generic arrangement of known computer components, we find no inventive
concept under Step 2B in any purported ordered combination of these
limitations. We find Appellant’s claims are unlike the claims considered by
the court in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016), in which the court found “an inventive
concept . . . in the non-conventional and non-generic arrangement of known,
conventional pieces.” 827 F.3d at 1350 (emphases added).
To the extent that Appellant advances nominal arguments for
dependent claims 2–4, 6–8, and 10–12 on page 19 of the Appeal Brief, we
note that “[a] statement which merely points out what a claim recites will not
be considered an argument for separate patentability of the claim.”
37 C.F.R. § 41.37(c)(1)(iv). See also Reply Br. 7–8.
In light of the foregoing, we conclude that each of Appellant’s claims
1–12, considered as a whole, is directed to a patent-ineligible abstract idea
that is not integrated into a practical application, and does not include an
inventive concept. Therefore, on this record, we sustain the Examiner’s
Rejection A under 35 U.S.C. § 101 of all claims 1–12 on appeal.8

8 Based upon Appellant’s arguments, we decide the appeal of Rejection A
under 35 U.S.C. § 101 of claims 1–12 based upon representative claim 1.
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are forfeited or waived.
See, e.g., 37 C.F.R. § 41.37(c)(1)(iv).
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Rejection B of Claims 1–3, 5–7, and 9–11 under 35 U.S.C. § 102
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharm., 432
F.3d 1368, 1375–76 (Fed. Cir. 2005) (citing Minn. Mining & Mfg. Co. v.
Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed. Cir.
1992)). Anticipation of a patent claim requires a finding that the claim at
issue “reads on” a prior art reference. Atlas Powder Co. v. IRECO, Inc., 190
F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).
Regarding anticipation Rejection B, we consider the following issues
raised by Appellant’s arguments:
Issues: Under 35 U.S.C. § 102(a)(1), did the Examiner err by finding
that Souza inherently or expressly discloses or describes the following
disputed limitations of claim 1:
[L1] receiving a prescriptive model;
[L2] translating, by a processor, the prescriptive model into a
technical prescriptive model; and
[L3] translating, by the processor, the technical prescriptive
model into an optimization model [?]

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Claim Construction
As a preliminary matter of claim construction, we consider the BRI
claim construction of the claim 1 terms “prescriptive model,” “technical
prescriptive model,” and “optimization model,” and note that neither the
claims nor the Specification provide explicit definitions. (emphasis added).
Claim 1 recites that a prescriptive model comprises “a structured set
of data” and “one or more instances of templates of a technical and/or
business prescriptive domain, the instances of the templates defining goals
and/or constraints, wherein the business prescriptive domain extends the
technical prescriptive domain defining a generic optimization problem and
the business prescriptive domain defines a more specific business problem
which is an implementation of the generic optimization problem.” Claim 1
(emphasis added).
The technical prescriptive model and the optimization model are the
result of the two translating steps of claim 1. We note that the term
“translating” encompasses at least two different meanings: 1) expressing in
a different form; and 2) moving from one place to another. See e.g.,
Merriam-Webster Dictionary, pub. 2006. See also 37 C.F.R. § 41.30
(dictionaries may be cited in Board proceedings). Based upon claim 1 and
paragraph 40 of the Specification, which describe that the translating is
performed using mapping rules to bind each parameter to a value, we apply
the first meaning.
In particular, the first translating step of claim 1 uses a set of mapping
rules to translate the prescriptive model into a technical prescriptive model,
which is further translated by the second recited translating step into an
optimization model.
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Turning to the Specification for additional context, the Specification
describes the prescriptive model 9 and the technical prescriptive model, as
corresponding to a business problem and a technical problem, respectively.
The technical prescriptive model defines a category of optimization
problems, and the prescriptive model defines a specific problem within the
category. See Spec. ¶¶ 18–19.
Paragraph 43 and Figure 7 of the Specification describe and depict the
prescriptive model as containing dataset 14, goal templates 44, and
constraint templates 46, consistent with the limitations set forth in claim 1.
The optimization model is broadly described as comprising goals and
constraints for the given dataset that can be solved to output a solution. See
Spec. e.g., ¶¶ 44–46.
In light of the above, under BRI, we interpret the claim term
“prescriptive model” as a model comprising structured data and templates, in
which the model defines a business problem with goals and/or constraints,
and the business problem extends a generic problem.
We interpret the claim term “technical prescriptive model” as a model
defining a generic problem, which includes templates translated from the
prescriptive model. See Spec. ¶ 50.
And we interpret the claim term “optimization model” as a model that
can be solved to output a solution. Claim 1 (emphasis added).

9 Cf. Spec. ¶ 41: “The prescriptive analytics model 16 defines the actual
concepts, constraint instances and goal instances that are used for computing
decisions in a prescriptive analysis. A prescriptive analytics model 16 is
always attached to a prescriptive domain, generally a business prescriptive
domain 32.”

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Regarding claim limitation L1 (receiving a prescriptive model), the
pertinent cited portions of Souza (Final Act. 38) disclose that a problem
instance is defined by a problem scope and a problem structure. See Souza
¶ 30. Each problem structure includes a business objective, an optimization
operator, and one or more constraints. Id. The problem scope is defined by
the problem domain, which includes all or a subset of a multi-dimensional
data model, and an evaluation level, which indicates a hierarchical level at
which the problem is to be evaluated. See Souza ¶ 30–31.
The selection and specification of the problem instance, including
the business objective (also referred to as a function or measure), an
optimization operator, and the constraints), are described at paragraph 31
and steps 100-110 of Figure 4 of Souza, and are further described with
respect to a graphical user interface (GUI) in paragraphs 54–60 of Souza,
which correspond to Figures 5–9 of Souza.
The Examiner finds that “all of the selected data of the multi-
dimensional data model selected via the saved list of menu items in Souza to
be the claimed received prescriptive model and the structured set of data and
one or more instances of templates.” Ans. 19 (emphasis added). The
selected data includes the function to be optimized, the optimization
operator, and constraints, which are considered templates because they are
defined in a GUI form with fields and variables. Id.

Regarding claim limitation L2 (translating...the prescriptive model
into a technical prescriptive model), the pertinent cited portions of Souza
(Final Act. 39) disclose that the problem instance is communicated to a
transformation module, and the transformation module transforms the
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problem instance from the multi-dimensional data format provided by the
user to a format appropriate for an optimization engine. See Souza ¶ 32 and
Fig. 4, step 116. The transforming is performed by translating the syntax of
the objective function, constraints, and other components of the problem
instance into an appropriate syntax for the optimization engine. Id.
The Examiner finds that Souza’s disclosure of “transforming the
problem instance from the multi-dimensional data format into a format
appropriate for an optimization engine used to solve the problem instance”
discloses limitation L2. See Ans. 22. The Examiner specifically finds “the
problem instance transformed into a syntax appropriate for the optimization
model is a technical prescriptive model of the problem instance.” Ans. 25
(emphasis added).

Regarding claim limitation L3 (translating...the technical prescriptive
model into an optimization model), the pertinent cited portions of Souza
(Final Act. 39–40) disclose that the transformation module communicates
the transformed problem instance to the optimization engine. See Souza ¶
33 and Fig. 4, step 118.
We focus our review on the Examiner’s finding that the transformed
problem “once communicated” in Souza discloses Appellant’s claimed
“optimization model.” Ans. 25. The Examiner specifically finds: “[b]y
Souza disclosing communicating the translated problem instance of the
multidimensional data model (i.e. the technical prescriptive model) from the
transformation module to the optimization engine in the process for
generating an optimization problem (i.e. optimization model) the system in
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Souza performs the claimed translating the technical prescriptive model into
an optimization model, as claimed.” Id.
As explained supra, Souza discloses receiving a selection or
specification of a problem instance, transforming the problem instance to an
appropriate format for an optimization engine, communicating the
transformed problem instance to the optimization engine, and then solving
the communicated transformed problem instance. See Souza ¶ 29–33 and
Fig. 4.
Thus, the Examiner finds that the claimed “technical prescriptive
model” reads on the transformed problem instance in Souza (see Final Act.
39; Ans. 22, 25), and that claim limitation L3 (translating...the technical
prescriptive model into an optimization model) reads on Souza’s description
of communicating the transformed problem instance to the optimization
engine (see Final Act. 39–40; Ans. 25).
However, Appellant urges that “[t]here is no language in the cited
passages that discloses translating the technical prescriptive model into an
optimization model.” Appeal Br. 32 (emphasis added). Referring to Souza’s
descriptions of: (1) transforming the problem instance from the multi-
dimensional format to a format appropriate for an optimization engine, and
(2) transforming the solution back into the multi-dimensional format,
Appellant avers that neither of these transforming steps discloses or
describes claim limitation L3. See Appeal Br. 32–33.
Based upon a preponderance of the evidence, we agree with Appellant
that Souza does not expressly nor inherently disclose at least disputed
claim 1 limitation L3.
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As noted above, the Examiner finds that Souza’s transformed problem
instance “once communicated” discloses the claimed “optimization model.”
Ans. 25. Although Souza discloses communicating the transformed
problem instance to the optimization engine (Fig. 4, step 118), the broadest
reasonable interpretation of “translating” as recited in claim 1 requires an
expression in a different form, and not merely the movement of data from
one place to another. See supra 25 (“translating” dictionary definition).
Thus, we find that merely communicating the transformed problem
instance to the optimization engine in Souza (e.g., at Fig. 4, step 118),
without more, cannot anticipate the claim 1 limitation L3, “translating”
under BRI, and under the rigorous requirements of anticipation:
[L3] translating, by the processor, the technical prescriptive
model into an optimization model by executing an optimization
model generator associated to the technical prescriptive model,
wherein the translations expose a user to natural language
definitions of business concepts, business constraints and
business goals thereby eliminating complex parameterization of
technical goals and constraints required to generate
optimization models, wherein the optimization model generator
is implemented using a definition in the technical prescriptive
domain of constraints and goal and constraint templates thereby
enabling the optimization model generator to depend on a class
of problems to solve a business problem thereby increasing an
ability to use the technical prescriptive domain as a target of
multiple business prescriptive domains;
Claim 1 (emphasis added).
Accordingly, we are constrained on this record to reverse the
Examiner’s anticipation Rejection B of independent claim 1. For the same
reasons, we also reverse Rejection B of remaining independent claims 5 and
9, which each recite the disputed limitation L3 of claim 1 using similar
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language having commensurate scope. Because we have reversed
Rejection B of all independent claims, for the same reasons, we also reverse
the Examiner’s anticipation Rejection B of dependent claims 2, 3, 6, 7, 10,
and 11.

Rejection C of Claims 4, 8, and 12 under 35 U.S.C. § 103
In light of our reversal of Rejection B of independent claims 1, 5, and
9 supra, we also reverse Rejection C of remaining dependent claims 4, 8,
and 12, which depend directly from independent claims 1, 5, and 9,
respectively. On this record, the Examiner has not shown how the
additionally cited Trenkov reference overcomes the aforementioned
deficiencies of Souza, as discussed above regarding anticipation Rejection B
of independent claims 1, 5, and 9.

CONCLUSIONS
By applying the Director’s 2019 Revised Guidance and October 2019
Update, as now set forth under MPEP Sections 2103 through 2106.07(c), we
conclude that all claims 1–12, as rejected by the Examiner under 35 U.S.C.
§ 101, are not directed to patent-eligible subject matter.
The Examiner erred in rejecting claims 1–3, 5–7, and 9–11 under 35
U.S.C. § 102(a)(1) as being anticipated by Souza.
The Examiner erred in rejecting claims 4, 8, and 12 under 35 U.S.C.
§ 103 as being obvious over the combination of Souza and Trenkov.

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DECISION SUMMARY

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–12 101 Eligibility 1–12
1–3, 5–7,
9–11
102(a)(1) Souza 1–3, 5–7,
9–11
4, 8, 12 103 Souza, Trenkov 4, 8, 12
Overall
Outcome
1–12

FINALITY AND RESPONSE
Because we have sustained at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision to reject
all claims on appeal. See 37 C.F.R. § 41.50(a)(1).
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)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED