INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Sep 18, 2020

2019002996 (P.T.A.B. Sep. 18, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/481,392 09/09/2014 Sandra E. Belfils GB920130045US1 4104
87220 7590 09/18/2020
Walder Intellectual Property Law (END)
C/O Walder Intellectual Property Law, P.C.
445 Crestover Circle
Richardson, TX 75080
EXAMINER
PEACH, POLINA G
ART UNIT PAPER NUMBER
2165
MAIL DATE DELIVERY MODE
09/18/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SANDRA E. BELFILS, STEPHANE HILLION,
THIERRY KORMANN, and CYRIL MATHEY
____________

Appeal 2019-002996
Application 14/481,392
Technology Center 2100
____________

Before JOHN A. EVANS, CATHERINE SHIANG, and JASON J. CHUNG,
Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jurisdiction
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of Claims 1–20, all pending claims. Final Act. 2.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). Appellant states that International Business
Machines Corporation is the real party in interest. Appeal Br. 2.
2 Rather than reiterate the arguments of Appellant and the Examiner, we
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Summary of the Invention
The claims relate to a method of operating a business rule
management system. See Abstract.
Invention
Claims 1, 6, and 11 are independent. Appeal Br. 44, 45, 47–48,
Claims App. An understanding of the invention can be derived from a
reading of Claim 1, which is reproduced in Table 1, infra.
References
Name3 Publication Number Date
Howell US 2010/0122154 A1 May 13, 2010
Simske US 2013/0104190 A1 Apr. 25, 2013

refer to the Appeal Brief filed September 14, 2018, (“Appeal Br.”); the
Reply Brief filed March 5, 2019, (“Reply Brief”); the Examiner’s Answer
mailed January 7, 2019, (“Ans.”); the Final Action mailed April 18, 2018,
(“Final Act.”); and the Specification filed September 9, 2014, (“Spec.”) for
their respective details.
3 All citations herein to the references are by reference to the first named
inventor/author only.

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Rejections4

Claims Rejected5 35 U.S.C. § References/Basis
1–20 101 Subject Matter Eligibility
Final Act. 3–6.
1–20 103(a),
Obviousness

Simske, Howell
Final Act. 6–12.

ANALYSIS
We have reviewed the rejections of Claims 1–20 in light of
Appellant’s arguments that the Examiner erred. We have considered in this
Decision only those arguments Appellant actually raised in the Briefs. Any
other arguments which Appellant could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We
provide the following explanation to highlight and address specific
arguments and findings primarily for emphasis. We consider Appellant’s
arguments as they are presented in the Appeal Brief and the Reply Brief.
CLAIMS 1–20: INELIGIBLE SUBJECT MATTER
Appellant argues the merits of the claims as a group with reference to
the limitations of Claim 1. Appeal Br. 4 (“The technological nature is
apparent from a reading of the independent claims, taking claim 1 as an
example.”), 11–12. Therefore, we decide the appeal of the 35 U.S.C. § 101

4 The Application was examined under the first inventor to file provisions of
the AIA. Final Act. 2.
5 The Examiner’s Answer does not renew the objections to the Title and to
Claim 1. See Final Act. 2; Appeal Br. 3–4; and Answer 7–15.
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rejection on the basis of illustrative Claim 1 and refer to the rejected claims
collectively herein as “the claims.” See 37 C.F.R. § 41.37(c)(1)(iv); see also
In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
We reviewed the record de novo. SiRF Tech., Inc. v. Int’l Trade
Commission, 601 F.3d 1319, 1331 (Fed. Cir. 2010) (“Whether a claim is
drawn to patent-eligible subject matter is an issue of law that we review de
novo.”). Based upon our review of the record in light of recent policy
guidance with respect to patent-eligible subject matter rejections under 35
U.S.C. § 101, we affirm the rejection of Claims 1–3, 5–17, and 19–28 for the
specific reasons discussed below.6
35 U.S.C. § 101
Section 101 provides that a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” 35 U.S.C. § 101.7 The Supreme Court
has long recognized, however, that section 101 implicitly excludes “[l]aws
of nature, natural phenomena, and abstract ideas” from the realm of patent-
eligible subject matter, as monopolization of these “basic tools of scientific

6 See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (hereinafter “Revised Guidance, 84 Fed. Reg.”). “All
USPTO personnel are, as a matter of internal agency management, expected
to follow the guidance.” Revised Guidance, 84 Fed. Reg. 51; see also
October 2019 Update at 1 (October 2019 Update: Subject Matter Eligibility)
(hereinafter “October 2019 Update”).
7 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under 35 U.S.C. § 101. MPEP § 2106.
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and technological work” would stifle the very innovation that the patent
system aims to promote. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. 576, 589 (2013)); see also Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72–78 (2012); Diamond v. Diehr, 450
U.S. 175, 185 (1981).
Under the mandatory Revised Guidance, 84 Fed. Reg., we reconsider
whether Appellant’s claims recite:
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), and
2. additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).

Only if a claim, (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then reach the
issue of whether the claim:
3. adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
4. simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.

A. Whether the claims recite a judicial exception.
The Revised Guidance, 84 Fed. Reg., extracts and synthesizes key
concepts identified by the courts as abstract ideas to explain that the
abstract-idea exception includes the following groupings of subject matter:
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(a) mathematical concepts,8 i.e., mathematical relationships, mathematical
formulas, equations,9 and mathematical calculations;10 (b) certain methods
of organizing human activity—fundamental economic principles or practices
(including hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or interactions
between people (including social activities, teaching, and following rules or
instructions);11 and (c) mental processes—concepts performed in the human
mind (including observation, evaluation, judgment, opinion).12
The preamble of independent Claim 1 recites: “A method, in a
computing device implementing a binding engine, for updating elements of a

8 Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“The concept of hedging . . .
reduced to a mathematical formula . . . is an unpatentable abstract idea.”).
9 Diehr, 450 U.S. at 191 (“A mathematical formula as such is not accorded
the protection of our patent laws,”); Parker v. Flook, 437 U.S. 584, 594
(1978) (“[T]he discovery of [a mathematical formula] cannot support a
patent unless there is some other inventive concept in its application.”).
10 SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018)
(holding that claims to a “series of mathematical calculations based on
selected information” are directed to abstract ideas).
11 Alice, 573 U.S. at 219–20 (concluding that use of a third party to mediate
settlement risk is a “fundamental economic practice” and thus an abstract
idea); see also Revised Guidance, 84 Fed. Reg. 52 n.13 for a more extensive
listing of “[c]ertain methods of organizing human activity” that have been
found to be abstract ideas.
12 Mayo, 566 U.S. at 71 (“[M]ental processes[ ] and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work.”) (quoting Gottschalk v. Benson, 409 U.S. 63, 67
(1972)).
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business rule management system, the method comprising.” The limitations
recited in the body of the claim are analyzed in Table I against the categories
of abstract ideas as set forth in the Revised Guidance, 84 Fed. Reg. As set
forth in Table I below, we find limitations [b]–[d] of independent Claim 1
recite abstract ideas, i.e., “mental processes.”
Table I
Claim 1 Revised Guidance
[a]13 accessing, by the binding
engine executing in the computing
device, a text file describing one or
more business process to be
implemented as one or more
business rules in the business rule
management system, wherein the
one or more business rules each
encapsulate a portion of the text
file;
An additional element that adds
insignificant extra-solution activity
to the judicial exception, i.e., mere
data-gathering. See Revised
Guidance, 84 Fed. Reg. 55.

[b] generating, by the binding
engine, bindings of a plurality of
text chunks within the text file to
respective elements of a plurality of
elements within the business rule
management system, and wherein
elements in the plurality of elements
are portions of business rules;
Mental processes, i.e., concepts
performed in the human mind
(including an observation,
evaluation, judgment, opinion). See
Revised Guidance, 84 Fed. Reg. 52.
[c] detecting, by the binding engine,
a change in a text chunk, in the text
file, bound to an element of the
plurality of elements;
Mental processes, i.e., concepts
performed in the human mind
(including an observation,
evaluation, judgment, opinion). See
Revised Guidance, 84 Fed. Reg. 52.

13 Step designators, e.g., “[a],” were added to facilitate discussion.
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[d] automatically modifying, by the
binding engine, content of the
element bound to the changed text
chunk within the business rule
management system, according to
the detected change in the changed
text chunk, to thereby generate a
modified element; and
Mental processes, i.e., concepts
performed in the human mind
(including an observation,
evaluation, judgment, opinion). See
Revised Guidance, 84 Fed. Reg. 52.
[e] executing, by a rules engine of
the business rule management
system, the modified element to
implement a modified business
process according to the detected
change in the text chunk.
An additional element that adds
insignificant extra-solution activity
to the judicial exception. See
Revised Guidance, 84 Fed. Reg. 55.

Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims recite a patent-ineligible concept, as we so conclude
above, we proceed to the “practical application” Step 2A(ii) wherein the
“claims are considered in their entirety to ascertain whether their character
as a whole is directed to excluded subject matter.” McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (citations
omitted). This test determines whether the recited judicial exception is
integrated into a practical application of that exception by: (a) identifying
whether there are any additional elements recited in the claim beyond the
judicial exception(s); and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application.
For the reasons which follow, we conclude that Appellant’s claims do
not integrate the judicial exception into a practical application.
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MPEP § 2106.05(a) “Improvements to the Functioning of a
Computer or to Any Other Technology or Technical Field”
“In determining patent eligibility, examiners should consider whether
the claim ‘purport(s) to improve the functioning of the computer itself’” or
“any other technology or technical field.” MPEP § 2106.05(a).
Appellant recites various claimed limitations to contend: “the claimed
invention is tied to a specific computing device implementing a binding
engine that itself is specifically configured to perform the operations
attributed to it in the present claims.” Appeal Br. 5. Appellant argues:
the claimed invention is specifically directed to a mechanism
[for] improving the operation of the computing elements by
binding text chunks to elements (portions of business rules),
detecting a change in a text chunk, and then automatically
modifying the element to which the text chunk is bound based
on the change to the text chunk to generate a modified element,
i.e., a modified portion of a business rule.
Id.
We find the claims operate to modify a first text file, i.e., “business
rules,” in accordance with changes to a second text file, i.e., “a text file
describing one or more business processes.” See Appeal Br. 44, Claims
App. We do not find where changes to a text file implicate how a computer,
per se, operates, nor do we find that the claims improve any other
technology.
Although we find the individual limitations [b]–[d] are directed to
mental processes, we find the claims as a whole are directed to “[c]ertain
methods of organizing human activity,” i.e., “commercial or legal
interactions []including . . . advertising, marketing or sales activities or
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behaviors; business relations.” See Revised Guidance, 84 Fed. Reg. 52.
Because, as Appellant discloses:
Within the business world, word processors are extremely
useful tools and have a large variety of uses and applications.
Many single users, offices, businesses, and organizations use
computers and word processors to compose, edit, format and
print written documents describing business rules with high
quality, in a timely fashion. Business rules are abstractions of
the policies and practices of a business organization.
Spec. ¶ 2.
Breaking down the barriers between the stakeholders who write
documents by using a word processor and software developers
who develop the corresponding application remains a real
challenge. One existing approach is a two-step process that
consists of taking advantage of a business analyst or consultant
to first interpret a document written by a business person and
then assist the IT organization implementing the business rules
as described in this document.
Spec. ¶¶ 3–5.
MPEP § 2106.05(b): Particular Machine
The Bilski machine-or-transformation test is only applicable to
method (process) claims. However, “[r]egardless of what statutory category
(‘process, machine, manufacture, or composition of matter,’ 35 U.S.C.
§ 101) a claim’s language is crafted to literally invoke, we look to the
underlying invention for patent-eligibility purposes.” CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1374 (Fed. Cir. 2011). Here, it is
clear that the invention underlying the system of Claim 6 and the computer
program product of Claim 11 is the method of Claim 1. We therefore,
analyze the machine prong of the Bilski machine-or-transformation test.

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Appellant discloses generic machines and software are suitable:
The binding engine 14 can be implemented purely as a
dedicated hardware component or can be implemented as a
software component being executed on suitable hardware, such
as a network-connected server, which can also run the business
rule management system 10.
Spec. ¶ 18.
The text file 24 describes one or more business processes that
are implemented by the business rule management system 10.
The system shown in Figure 1 is designed so that the business
user 22 can make changes to the text file 24 and these changes
will be implemented correctly in the business rule management
system 10 by the binding engine 14.
Spec. ¶ 19.
When the text file 24 was first created by the business user 22,
as a standard text file 24, then the business analyst 26 would
take that text file 24 and generate the associated rules 28, using
their experience and skills as a business analyst to do so. At the
same time, the business analyst 26 would create the bindings
between the various text chunks 30 and the respective rules 28;
thereby linking specific parts of the text file 24 to specific rules
28. The binding engine 14 stores these links or is arranged to
have access to the links, which are saved in a suitable format.
Therefore, in relation to the text file 24, the binding engine 14
is aware of the bindings from the text file 24 to the rules 28.
Spec. ¶ 22.
Figure 2 shows an example of a portion of a text file 24, as the
business user 22 would see on a display device of a standard
personal computer, for example. The text file 24 is accessed
via a suitable word processing application, which in this case
supports extended functions such as charts and tables, although
this is not material, as a plain text only file would be sufficient.
Various text chunks 30 are underlined within the document 24,
each of which is bound to a respective rule 28. The view
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shown in Figure 2 is to illustrate the invention; the user would
not actually see the rules 28 on the display device.
Spec. ¶ 27.
Appellant discloses the claimed system relies on “a standard personal
computer” and “a suitable word processing application.” See Spec. ¶ 27.
We find no indication, nor does Appellant so direct our attention, that the
claimed invention relies on other than generic devices or uses other than
generic software. We, therefore, conclude Appellant’s claims fail to satisfy
the machine prong of the Bilski machine-or-transformation test.
MPEP § 2106.05(c): Particular Transformation
This section of the MPEP guides: “Another consideration when
determining whether a claim recites significantly more is whether the claim
effects a transformation or reduction of a particular article to a different state
or thing.” “Transformation and reduction of an article to a different state or
thing is the clue to the patentability of a process claim that does not include
particular machines.” Bilski, 561 U.S. at 658 (quoting Benson, 409 U.S.
at 70).
The claims select and analyze certain electronic data, i.e., a standard
text file created by a business user. See Spec. ¶ 27. The selection of
electronic data is not a “transformation or reduction of an article into a
different state or thing constituting patent-eligible subject matter.” See In re
Bilski, 545 F.3d 943, 962 (Fed. Cir. 2008) (emphasis added); see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“The mere manipulation or reorganization of data . . . does not satisfy
the transformation prong.”). Applying this guidance here, we conclude
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Appellant’s method claims fail to satisfy the transformation prong of the
Bilski machine-or-transformation test.
MPEP § 2106.05(e): Other Meaningful Limitations
This section of the MPEP guides:
Diamond v. Diehr provides an example of a claim that recited
meaningful limitations beyond generally linking the use of the
judicial exception to a particular technological environment.
450 U.S. 175[] (1981). In Diehr, the claim was directed to the
use of the Arrhenius equation (an abstract idea or law of nature)
in an automated process for operating a rubber-molding press.
450 U.S. at 177-78. . . . The Court evaluated additional
elements such as the steps of installing rubber in a press,
closing the mold, constantly measuring the temperature in the
mold, and automatically opening the press at the proper time,
and found them to be meaningful because they sufficiently
limited the use of the mathematical equation to the practical
application of molding rubber products. 450 U.S. at 184,
187. . . . In contrast, the claims in Alice Corp. v. CLS Bank
International did not meaningfully limit the abstract idea of
mitigating settlement risk. 573 U.S. 208 [](2014). In
particular, the Court concluded that the additional elements
such as the data processing system and communications
controllers recited in the system claims did not meaningfully
limit the abstract idea because they merely linked the use of the
abstract idea to a particular technological environment (i.e.,
“implementation via computers”) or were well-understood,
routine, conventional activity.

“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Alice, 573 U.S. at 225. Similarly as in Alice, we find
that “[t]aking the claim elements separately, the function performed by the
computer at each step of the process is ‘[p]urely conventional.’” Id. (citation
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omitted). “In short, each step does no more than require a generic computer
to perform generic computer functions.” Id.
We find that Appellant’s claims do not add meaningful limitations
beyond generally linking the use of the judicial exception to a particular
technological environment.
MPEP § 2106.05(f): Mere Instructions to Apply an Exception
Appellant does not persuasively argue that their claims do any more
than to merely invoke generic computer components merely as a tool in
which the computer instructions apply the judicial exception.
MPEP § 2106.05(g): Insignificant Extra-Solution Activity
The claims acquire and display data, which are classic examples of
insignificant extra-solution activity. See, e.g., Bilski, 545 F.3d at 963 (en
banc), aff’d sub nom, Bilski, 561 U.S. at 593.
MPEP § 2106.05(h): Field of Use and Technological
Environment
[T]he Supreme Court has stated that, even if a claim does not
wholly pre-empt an abstract idea, it still will not be limited
meaningfully if it contains only insignificant or token pre- or
post-solution activity—such as identifying a relevant audience,
a category of use, field of use, or technological environment.
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013)
(citation omitted).
We find the claimed data-manipulation is simply a field of use that
attempts to limit the abstract idea to a particular technological environment.
We are unpersuaded by Appellant’s arguments because the mere application
of an abstract idea in a particular field is not sufficient to integrate the
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judicial exception into a practical application. See Revised Guidance, 84
Fed. Reg. 55, n.32. In view of the foregoing, we conclude the claims are
“directed to” a judicial exception.
B. Well-understood, routine, conventional
Because the claims recite a judicial exception and do not integrate that
exception into a practical application, we must then reach the issue of
whether the claim adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in the field. Revised
Guidance, 84 Fed. Reg. 56; see also Appeal Br. 23 (citing the “Berkheimer
Memorandum”).14 As discussed above, the written description describes the
claimed computer system consistent with its being “well-understood,
routine, [and] conventional.” Appellant discloses the claimed system relies
on “a standard personal computer” and “a suitable word processing
application.” See Spec. ¶ 27.
C. Specified at a high level of generality
It is indicative of the absence of an inventive concept where the
claims simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Revised Guidance, 84 Fed. Reg. 56.
The claims fail to recite any specific steps of an algorithm, nor does
Appellant cite any Specification disclosure for the required specificity.

14 Memorandum from Robert W. Bahr, Deputy Comm’r for Patent
Examination Policy, to Patent Examining Corps, U.S. Patent and Trademark
Office (April 19, 2018), https://www.uspto.gov/sites/default/files/
documents/memo-berkheimer-20180419.PDF (citing Berkheimer v. HP Inc.,
881 F.3d 1360, 1367–68 (Fed. Cir. 2018)).
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We find the limitations are specified at such a high level of generality
consistent with the absence of an inventive concept. Considering the claim
limitations as an ordered combination adds nothing to the abstract idea that
is not already present when the limitations are considered separately. See
Mayo, 566 U.S. at 79. The ordered combination of limitations amounts to
nothing more than certain mental processes implemented with generic
computer components that operate “in a conventional way.” See also Alice,
573 U.S. at 225–26. Therefore, we conclude that none of the claim
limitations, viewed “both individually and as an ordered combination,”
amount to significantly more than the judicial exception in order to
sufficiently transform the nature of the claims into patent-eligible subject
matter.” See Alice, 573 U.S. at 217 (internal quotations omitted) (quoting
Mayo, 566 U.S. at 79).
In view of the foregoing, we sustain the rejection of Claims 1–20
under 35 U.S.C. § 101.

CLAIMS 1–20: OBVIOUSNESS OVER SIMSKE AND HOWELL.
Appellant contends Simske fails to teach:
accessing, by the binding engine executing in the computing
device, a text file describing one or more business process to be
implemented as one or more business rules in the business rule
management system, wherein the one or more business rules
each encapsulate a portion of the text file,

as recited in Claim 1. Appeal Br. 32. Appellant argues the document,
disclosed by Simske, does not disclose any business process implemented as
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a set of business rules. Appellant argues rather, the Simske document has
policy-eliciting terms, such as “confidential,” or “secret.” Id.
The Examiner finds Simske teaches “a set of policy definitions” that
“travels with the information.” Ans. 7 (citing Simske, ¶¶ 4 and 14). The
Examiner finds “[a] set of policy definitions is surely describing a set of
“various business rules”, which “are enforced throughout the document
lifecycle, and thus documents so managed are compliant by design.” Id.
(quoting Simske, ¶ 16). In view of the foregoing, the Examiner finds “a file
or a document with a set of business policy definitions, which are
implemented throughout the document lifecycle by a management system is
analogous to the limitation “a text file describing one or more business
processes in be implemented as one or more business rules in the business
rule management system.” Ans. 7–8 (citing Simske ¶ 22, Figure 1,
(Numeral 105)).
Appellant contends “all that these portions of Simske describe is the
ability to associate policy definitions with the information (documents) that
the policy definitions are intended to protect.” Reply Br. 13. Appellant
argues:
Simske teaches that the documents described in Simske are the
targets of the associated policies, i.e. Simske teaches that the
documents may have policy eliciting terms, such as
“confidential” or “secret,” and when a policy daemon detects an
application is trying to perform an action on a document, it
holds the action, scans the document to find if there are any
policy eliciting terms, and then applies the corresponding policy
to the held action.

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Reply Br. 14 (citing Simske ¶¶ 37, 38). Appellant argues Simske fails to
disclose “an actual text file that describes one or more business processes to
be implemented as one or more business rules in a business rule
management system.” Id.
Simske discloses a policy daemon programmed to scan a document
for policy-eliciting terms in response to a document event, i.e., when an
application command is received by the daemon that has a potential for
releasing information outside of a document’s current secure environment
and/or releasing information to an unauthorized party. Simske ¶ 37. Simske
further discloses that, based on system calls, the policy daemon determines
whether the application program tries to effect any action that the policy
daemon is programmed to detect, then the policy daemon intercepts the
request and applies the policy according to the policy definitions. Simske
¶ 38. In agreement with Appellant, we find Simske fails to disclose “an
actual text file that describes one or more business processes to be
implemented as one or more business rules in a business rule management
system.” Reply Br. 14. Independent Claims 6 and 11 recite commensurate
limitations. In view of the foregoing, we decline to sustain the rejection of
Claim 1–20 under 35 U.S.C. § 103 over Simske and Howell.

DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
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1–20 103(a) ZhSimske, Howell 1–20
Overall 1–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED