International Business Machines Corporation

Patent Trials and Appeals Board

May 24, 2021

2019006476 (P.T.A.B. May. 24, 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.
14/931,033 11/03/2015 Randy S. Johnson END920150222US1 1522
11445 7590 05/24/2021
IBM Corporation - Patent Center
1701 North Street
B/256-3
Endicott, NY 13760
EXAMINER
ZUBERI, MOHAMMED H
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
05/24/2021 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):
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RANDY S. JOHNSON and TEDRICK N. NORTHWAY

Appeal 2019-006476
Application 14/931,033
Technology Center 2100
____________

Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and
JOHN A. EVANS, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final decision to reject Claims 1–18. Appeal Br. 1. We have jurisdiction
under 35 U.S.C. § 6.
We REVERSE and enter a NEW GROUND OF REJECTION.2

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies International Business Machines
Corporation, as the real party in interest. Appeal Br. 1.
2 Throughout this Decision, we refer to the Appeal Brief filed March 18,
2019 (“Appeal Br.”); the Reply Brief filed August 28, 2019 (“Reply Br.”);
the Final Office Action mailed October 18, 2018 (“Final Act.”); the
Examiner’s Answer mailed June 28, 2019 (“Ans.”); and the Specification
filed November 3, 2015 (“Spec.”).
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Application 14/931,033

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STATEMENT OF THE CASE
CLAIMED SUBJECT MATTER
The claims relate to a method of dynamically creating a change
template based on a change request received from a user. See Abstract.
CLAIMS
Claims 1, 7, and 13 are independent. Claim 1 is illustrative and
reproduced below:
1. A method of dynamically creating a change template
based on a change request received from a user, comprising the
steps of:
a computer assigning the change request to a category
based on specifics of the change request;
the computer looking up the category assigned to the
change request, to find one or more existing change templates
for the category;
if the computer finds at least one existing change
template for the category, the computer assigning a template to
the change request; and
if the computer does not find at least one existing
template for the category, the method comprising the steps of:
the computer analyzing historical change requests to
identify similar changes in historical change requests to the
change request;
the computer copying data from a template used for a
historical change that was similar to the change requested to
create a draft template;
the computer altering the draft template to remove
information which is not relevant to the change request and
storing the altered draft template in a repository;
the computer sending the altered draft template to a
reviewer as a proposed template; and
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the computer storing the approved proposed template
from the reviewer in the repository.
REFERENCE

Weverton Luis da Costa Cordeiro, et al., “A Template-based Solution to
Support Knowledge Reuse in IT Change Design,” NOMS 2008 - 2008 IEEE
Network Operations and Management Symposium, Salvador, Bahia, 2008,
pp. 355–362 (hereinafter Cordeiro).
REJECTION3 AT ISSUE
Claims 1–18 stand rejected as obvious over Cordeiro. Final Act. 3–7.
ANALYSIS
We have reviewed the rejection of Claims 1–18 in light of Appellant’s
arguments that the Examiner erred. We are persuaded of error. 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 1–18: OBVIOUSNESS OVER CORDEIRO.
Appellant argues these claims as a group specifically over the
recitations of Claim 1. See App. Br. 7. (“Appellant’s [independent] claims
1, 7, and 13 require that the computer, not the operator assign a category to
the change request, based on a change requested received.”). Therefore, we
decide the appeal of the § 103 rejections on the basis of Claim 1 and refer to
the rejected claims collectively herein as “the claims.” See 37 C.F.R.
§ 41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).

3 The present application, filed on or after March 16, 2013, is being
examined under the first inventor to file provisions of the AIA. Final Act. 2.
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Claim 1 recites, inter alia, “a computer assigning the change request
to a category based on specifics of the change request.” Independent Claims
7 and 13 contain commensurate recitations. The claims relate to a “method
of dynamically creating a change template based on a change request
received from a user.” Claim 1.
The Examiner finds each limitation of the claims is taught by
Cordeiro. Final Act. 3.
Appellant contends Appellant’s claims require that the user provides a
change request, however, it is the computer that assigns the change request
to a category based on the specifics of the change request and it is the
computer that looks up the category assigned to the change request to find
one or more existing change templates for the category. Appeal Br. 7.
The Examiner finds Appellant advances a valid interpretation of the
claims, but finds the claims do not preclude user involvement with the
computer system takes place beyond the initial change request step, wherein
the user operates the computer system to complete the processes outlined in
the claims. Ans. 4. The Examiner finds the “metes and bounds of the
claims simply do not clearly show where user involvement with the
computer ends.” Id.
Appellant contends the “Examiner did not provide any teaching or
suggestion other than that of Applicant’s application for a human to use a
computer to perform the steps of Applicant’s claims.” Reply Br. 5.4
We agree with Appellant. Each step of the claimed method is
introduced with the recitation “a computer,” or “the computer.” See Claim

4 Appellant’s Reply Brief is not paginated. The relevant page was
determined by hand-counting.
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1. These recitations indicate a computer is performing the claimed method
step. The Examiner fails to explain how the claim language, which
explicitly relates to computer performance, is broad enough to encompass
human performance. Nor is the Examiner’s finding supported by reference
to the Specification. As the Federal Circuit has emphasized, the broadest
reasonable interpretation in light of the Specification is not whether the
Specification precludes some broad reading of the claim term adopted by the
Examiner. See In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir.
2017). Nor is the broadest reasonable interpretation simply one that is not
inconsistent with the Specification. Id. at 1383. Rather, it is an
interpretation that corresponds with what and how the inventor describes his
invention in the Specification, that is, an interpretation consistent with the
Specification. Id. (citing In re Suitco Surface, Inc., 603 F.3d 1255, 1259–60
(Fed. Cir. 2010)). Moreover, we find Cordeiro explicitly discloses human
interactions in the Request For Change (RFC) process. See infra, New
Grounds of Rejection.
In view of the foregoing, we decline to sustain the rejection of Claims
1–18 under 35 U.S.C. § 103.

NEW GROUNDS OF REJECTION BY BOARD
We enter a new ground of rejection for Claims 1–18 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter, i.e., an abstract idea.
In responding to the rejections under 35 U.S.C. § 103, Appellant
contends:
Cordeiro requires that an operator establish any relationship
present between the request for a change and the plan to
execute the change including the mapping between attributes
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and request template and variables of the plan templates.
Variables of the plant template that not set during the mapping
process are also assigned “values” by an operator.
Appeal Br. 7. Appellant argues:
The Examiner’s argument relies on the aid of hindsight to
modify Cordeiro in a manner to yield Applicant’s claimed
invention. Supporting this assertion, and standing alone as a
reason that the Examiner’s reasoning is insufficient to make a
prima facie case for obviousness, the Examiner did not provide
any teaching or suggestion other than that of Applicant’s
application for a human to use a computer to perform the steps
of Applicant’s claims.
Reply Br. 5.
Moreover, Appellant explicitly discloses:
Currently, change templates are manually selected and created.
Users enter change requests for new or changed services
regularly in IT environments. Change assignees may recognize
similar changes and use a change template to ensure all required
activities, approvals, and coordination is performed, but many
times change templates are not used and required steps or
coordination are omitted, leading to last minute scrambling and
increased possibility of failed changes.
Spec., ¶ 6.
Cordeiro explicitly discloses human involvement in the change-
management process:
Change management, as described in the ITIL Service Support
book [3], defines that changes required to be executed over the
managed IT infrastructure should be specified in documents
called Requests for Change (RFC). RFCs are then supposed to
be processed, either manually or automatically, for the
generation of change plans.
Cordeiro, 355, col. 1 (bolding added) (The Information Technology
Infrastructure Library (ITIL)). Cordeiro further discloses:
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We highlight two reasons that justify the importance of reusing
the experience of operators in the implementation of IT
changes. First, as change plans are recurrently instantiated,
they become more stable and, therefore, their use may result in
fewer incidents (upon change execution). Second, the time
consumed by the IT personnel in the specification and planning
of changes tends to be reduced, given that they will seldom be
generated “from scratch”.
Cordeiro, 355, col. 2. Furthermore, Cordeiro discloses that at the RFC
process requires the intervention at least two classes of persons:
The Change Requester (disclosed as a person) starts a change
process by interacting with the component Change Designer in
order to specify an RFC.

After an RFC is instantiated, an Operator [disclosed as a
person], who is responsible for modeling the change procedure,
interacts with the component Change Designer (4), now to
sketch a preliminary change plan. In this stage, the operator
specifies large-grained steps required to fulfill the RFC
objectives, possibly taking advantage of plan templates
available in the Change Templates repository.

Thereafter, the resulting change plan can be modified by the
operator as to precisely reflect his/her needs.
Cordeiro, 356, col. 2–357, col. 1.
Thus, Cordeiro explicitly discloses, and Appellant admits, that prior
art RFC processes require extensive human involvement, i.e, the RFC
process is one that a human may perform using pencil and paper.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
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ideas” are not patentable. See, e.g., Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind. See Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (‘‘[W]ith the
exception of generic computer-implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper.’’); Mortg. Grader, Inc. v. First Choice Loan
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Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016) (holding that computer-
implemented method for ‘‘anonymous loan shopping’’ was an abstract idea
because it could be ‘‘performed by humans without a computer’’); Versata
Dev. Grp. 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.’’).
As discussed above, Cordeiro discloses the claimed method can be
performed by a person using paper and pencil. Moreover, Appellant argues:
“the Examiner did not provide any teaching or suggestion other than that of
Applicant’s application for a human to use a computer to perform the steps
of Applicant’s claims.” Reply Br. 5. The claimed method is not one that
“could not, as a practical matter, be performed entirely in a human’s mind.”
See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1376 (Fed.
Cir. 2011) (distinguishing Research Corp. Techs. v. Microsoft Corp., 627
F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade Comm’n, 601
F.3d 1319 (Fed. Cir. 2010), as directed to inventions that “could not, as a
practical matter, be performed entirely in a human’s mind”).
Further, the claim does not recite a practical application of the mental
process, as it does not improve the functioning of a computer, or other
technology; does not implement the mental process on a particular machine;
or result in the transformation of an article to another thing. Nor do the
claims recite additional elements, which recite significantly more than the
abstract idea. Rather the claims merely recites using a computer to perform
the mental process. Appellant discloses only generic computing devices:
“[c]lient computer 52 may be, for example, a mobile device, a personal
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digital assistant, a netbook, a laptop computer, a tablet computer, a desktop
computer, or any other type of computing device.” Spec. ¶ 17. See Alice,
573 U.S. at 221 (internal citation omitted). “A claim that recites an abstract
idea must include ‘additional features’ to ensure ‘that the [claim] is more
than a drafting effort designed to monopolize the [abstract idea].’” Id.
(quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1−18 103 Cordeiro 1−18
1−18 101 Abstract Idea 1−18
Overall
Outcome
1−18 1−18
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) which provides that “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
(emphasis added). Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
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examiner, in which event the prosecution will be remanded to
the examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.5 or
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
The request for rehearing must address any new ground of
rejection and state with particularity the points believed to have
been misapprehended or overlooked in entering the new ground
of rejection and also state all other grounds upon which
rehearing is sought.
(emphasis added).

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

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

REVERSED; 37 C.F.R. § 41.50(b)

5 Regarding option ( 1 ), "Reopen prosecution," and particularly regarding the
requirement to submit an amendment and/or new evidence, please note
MPEP 1214.01(1): “If the appellant submits an argument without either an
appropriate amendment or new evidence as to any of the claims rejected by
the Board, it will be treated as a request for rehearing under 37 C.F.R.
41.50(b )(2). “If for any reason Appellant desires to reopen prosecution
before the Examiner without submitting an amendment and/or new evidence,
a Request for Continued Examination (RCE) that complies with 3 7 C.F .R.
§ 114 will remove the application from the jurisdiction of the Board under
37 C.F.R. §41.35, and will reopen prosecution before the Examiner.