International Business Machines Corporation

Patent Trials and Appeals Board

May 21, 2020

14020926 - (D) (P.T.A.B. May. 21, 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.
14/020,926 09/09/2013 Akihiro Saito JP920120095US1_8134-0072 3541
73109 7590 05/21/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
NG, BILLY H
ART UNIT PAPER NUMBER
2441
NOTIFICATION DATE DELIVERY MODE
05/21/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AKIHIRO SAITO
___________

Appeal 2019-001978
Application 14/020,926
Technology Center 2400
_________________

Before BRADLEY W. BAUMEISTER, JAMES B. ARPIN, and
MICHAEL J. ENGLE, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 21–38, all of the pending claims. Appeal Br. 4.2
Claims 1–20 are cancelled. Final Act. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party-in-interest as IBM
Corporation. Appeal Br. 1.
2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed
September 19, 2018) and Reply Brief (“Reply Br.,” filed January 7, 2019);
the Final Office Action (“Final Act.,” mailed April 30, 2018) and the
Examiner’s Answer (“Ans.,” mailed November 7, 2018); and the
Specification (“Spec.,” filed September 9, 2013). Rather than repeat the
Examiner’s findings and determinations and Appellant’s contentions in their
entirety, we refer to these documents.
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STATEMENT OF THE CASE
Appellant’s claimed invention relates to methods, systems, and
computer program products “supporting combination decisions for virtual
resources. The present invention relates more specifically to a device and
method supporting combination decisions of virtual resources to be located
in a single physical resource.” Spec. ¶ 17.
As noted above, claims 21–38 are pending. Claims 21, 27, and 33 are
independent. Appeal Br. 31 (claim 21), 32–33 (claim 27), 34–35 (claim 33)
(Claims App.). Claims 22–26 depend directly or indirectly from claim 21,
claims 28–32 depend directly or indirectly from claim 27, and claims 34–38
depend directly or indirectly from claim 33. Id. at 31–36.
Claim 21, reproduced below, is illustrative.
21. A method of relocating virtual resource into a single
physical resource, comprising:
acquiring, for each of a plurality of candidate virtual
resources, change status information indicating a change in a
load for each of the respective plurality of candidate virtual
resources;
performing a first statistical processing on the change status
information for the plurality of candidate virtual resources to
determine whether a high correlation exists between changes in
the loads of the plurality of candidate virtual resources;
performing a second statistical processing on the change
status information for the plurality of candidate virtual resources
to determine whether a high correlation exists between load
values above or below a median line in the loads of the plurality
of candidate virtual resources; and
locating, within the single physical resource and based upon
both the first and second statistical processing, the plurality of
candidate virtual resources in the single physical resource.
Id. at 31.
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Claim 27 recites “[a] computer hardware system configured to
relocate virtual resource into a single physical resource, comprising: a
hardware processor programmed to initiate the following executable
operations” performing the steps as recited in claim 21. Id. at 31, 32–33.
Claim 33 recites “[a] computer program product for relocating virtual
resource into a single physical resource, comprising: a computer readable
storage hardware device having program code stored thereon, the program
code executable by a hardware processor to perform” the steps as recited in
claim 21. Id. at 31, 34–35.
The Examiner relies on substantially the same findings and arguments
in rejecting claims 21–38 as patent ineligible (Final Act. 2–7, 13–17), and
Appellant does not contest the eligibility rejection of any claim separately
from independent claim 21 (see Appeal Br. 9–16). For reasons discussed
below, we are not persuaded that the Examiner has shown that claim 21 is
directed to an abstract idea.
In addition, the Examiner relies on substantially the same findings and
arguments in rejecting independent claims 21, 27, and 33 as obvious. Final
Act. 7–8, 16–28. Except for claim 23, Appellant does not argue the
dependent claims separately from their base claims. See Appeal Br. 23–24,
26–28. Claims 21, 27, and 33 recite the same disputed limitations (Appeal
Br. 31, 32–33, 34–35 (Claims App.)), and we find at least one of Appellant’s
contentions with respect to claim 21 persuasive of dispositive Examiner
error (id. at 16–23). Therefore, we focus our analysis of both rejections on
independent claim 21.
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REFERENCES AND REJECTIONS
The Examiner relies upon the following references in rejecting the
claims:
Name3 Number Publ’d/Issued Filed
Yemini US 8,396,807 B1 Mar. 12, 2013 Aug. 12, 2009
Usa US 2004/0143664 A1 July 22, 2004 Oct. 31, 2003
Isci US 2011/0302578 A1 Dec. 8, 2011 June 4, 2010
Sekiguchi US 2012/0096460 A1 Apr. 19, 2012 Sept. 12, 2011
Specifically, the Examiner rejects claims 21–38 under 35 U.S.C.
§ 101, as directed to patent ineligible subject matter, without significantly
more. Final Act. 2–7, 13–17. The Examiner also rejects claims 21–23, 25–
29, 31–35, 37, and 38 as unpatentable under 35 U.S.C. § 103 over the
combined teachings of Sekiguchi, Isci, and Yemini (id. at 17–31) and claims
24, 30, and 36 as unpatentable under 35 U.S.C. § 103 over the combined
teachings of Sekiguchi, Isci, Yemini, and Usa (id. at 31–33).4
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
For the reasons given below, we reverse the Examiner’s rejections.

3 All reference citations are to the first named inventor only.
4 The Examiner also objects to claims 23, 25, 29, 31, 35, and 37 as allegedly
including various informalities. Final Act. 12–13. We do not hear or decide
whether the Examiner erred with respect to such objections on appeal.
MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining to
objections and formal matters [that] are not properly before the Board.”).
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ANALYSIS
Patent Eligible Claims
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. 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 Court’s two-part 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.”). According to the Court, 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)).
In Diamond v. Diehr, the claim at issue recited a mathematical
formula, but the Court held that “a claim drawn to subject matter otherwise
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statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diamond v. Diehr, 450 U.S. 175, 187 (1981).
Having said that, the Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. at 191 (citing Benson and Flook). Nevertheless, the
Court noted that “[i]t is now commonplace that an application of a law of
nature or mathematical formula to a known structure or process may well be
deserving of patent protection.” Id. at 187; see also BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016)
(Even if the individual components were known, “an inventive concept can
be found in the ordered combination of claim limitations that transform the
abstract idea of filtering content into a particular, practical application of
that abstract idea” (emphasis added).).
If the claim is “directed to” an abstract idea, we next “must examine
the elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
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B. Office Patent Eligibility Guidance
In an effort to achieve clarity and consistency in how the Office
applies the Court’s two-part framework, the Office published revised
guidance on the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).5 In Step One of our
analysis, we look to see whether the claims, as written, fall within one of the
four statutory categories identified in § 101. Id. at 53 (“Examiners should
determine whether a claim satisfies the criteria for subject matter eligibility
by evaluating the claim in accordance with the criteria discussed in
MPEP6 2106, i.e., whether the claim is to a statutory category (Step 1) and
the Alice/Mayo test for judicial exceptions (Steps 2A and 2B)”).
Under the guidance, we then look to whether the claim recites:
(1) Step 2A – Prong One: 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) Step 2A – Prong Two: additional elements that integrate the
judicial exception into a practical application (see MPEP
§ 2106.05(a)–(c), (e)–(h)).

5 “All USPTO personnel are, as a matter of internal agency management,
expected to follow the guidance.” 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. at 51; see also October 2019 Update:
Subject Matter Eligibility, 2 (Oct. 17, 2019) (“Note, the feedback received
was primarily directed to examination procedures and, accordingly, this
update focuses on clarifying practice for patent examiners. However, all
USPTO personnel are expected to follow the guidance.”).
6 All Manual of Patent Examining Procedure (“MPEP”) citations herein are
to MPEP, Rev. 08.2017, January 2018.
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See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
at 54–55 (“Revised Step 2A”).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, 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.
See id. at 56 (“Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept.”).
C. Step 2A, Prong One – Claim 21 Recites an Abstract Idea7
Applying the first part of the Alice/Mayo framework (Step 2A), the
Examiner finds, the claims recite “an abstract idea of organizing and
manipulating information through mathematical correlation.” Final Act. 3,
14. In particular, the Examiner determines:
The steps “performing a first statistical processing”,
“performing a second statistical processing” and “locating the
plurality of candidate virtual resources based upon both the first
and second statistical processing” are found analogous to
organizing and manipulating information through mathematical
correlation.
Id. at 15 (italics omitted); Ans. 3; see Digitech Image Techs., LLC v. Elecs.
for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2017) (“The above claim

7 The Examiner and Appellant do not dispute that the claims fall within one
of the four statutory categories identified in § 101 under Step 1, so we begin
our analysis with Step 2A.
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recites a process of taking two data sets and combining them into a single
data set, the device profile. The two data sets are generated by taking
existing information—i.e., measured chromatic stimuli, spatial stimuli, and
device response characteristic functions—and organizing this information
into a new form. The above claim thus recites an ineligible abstract process
of gathering and combining data that does not require input from a physical
device.”); see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (“The focus of the asserted claims, as illustrated by
claim 12 quoted above, is on collecting information, analyzing it, and
displaying certain results of the collection and analysis.”).
Appellant contends that the Examiner mischaracterizes the claims as
attempting to claim an equation. Appeal Br. 14; see Final Act. 4–5. The
Examiner acknowledges that an equation is not recited in the claims.
However, the Examiner asserts that an equation is not required to perform
mathematical correlation. Ans. 7. The Examiner notes that “[t]here is no
equation recited in the [Digitech] claim, and the court identifies such
processes are mathematical algorithms.” Id.; see Digitech, 758 F.3d at 1351
(“Without additional limitations, a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible.”).
Nevertheless, as the Office explains,
When determining whether a claim recites a mathematical
concept (i.e., mathematical relationships, mathematical formulas
or equations, and mathematical calculations), examiners should
consider whether the claim recites a mathematical concept or
merely includes limitations that are based on or involve a
mathematical concept. A claim does not recite a mathematical
concept (i.e., the claim limitations do not fall within the
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mathematical concept grouping), if it is only based on or involves
a mathematical concept. For example, a limitation that is merely
based on or involves a mathematical concept described in the
specification may not be sufficient to fall into this grouping,
provided the mathematical concept itself is not recited in the
claim.
October 2019 Update: Subject Matter Eligibility at 3 (footnotes omitted);
see Digitech, 758 F.3d at 1350 (“In determining whether a process claim
recites an abstract idea, we must examine the claim as a whole, keeping in
mind that an invention is not ineligible just because it relies upon a law of
nature or mathematical algorithm.”). To be sure, Appellant’s Specification
discloses that Equation 1 may be used in the first statistical processing.
Spec. ¶¶ 39–42. However, we are required to ensure that the examiners
follow the 2019 Revised Patent Subject Matter Eligibility Guidance, as
clarified by the October 2019 Update: Subject Matter Eligibility. Under this
Office Guidance, the fact that the Specification may provide evidence that
the claimed statistical analysis is performed by using mathematical concepts
is not sufficient to show that the claim recites a mathematical concept
because the equation, itself, is not recited in the claims. Consequently, we
are not persuaded that the claims recite a mathematical concept consistent
with the October 2019 Update: Subject Matter Eligibility.
This determination does not end our inquiry. We next inquire whether
claim 21 recites a mental process. The Office’s Guidance explains:
[b]y way of example, examiners may review the specification to
determine if the underlying claimed invention is described as a
concept that is performed in the human mind and applicant is
merely claiming that concept performed 1) on a generic
computer, 2) in a computer environment or 3) is merely using a
computer as a tool to perform the concept. In these situations,
the claim is considered to recite a mental process.
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October 2019 Update: Subject Matter Eligibility at 8 (emphasis added).
The method of claim 21 broadly describes the steps of (1) acquiring
information indicating a change (“acquiring, for each of a plurality of
candidate virtual resources, change status information indicating a change in
a load for each of the respective plurality of candidate virtual resources”),
(2) performing a first statistical processing on the information to determine
whether a high correlation exists between changes (“performing a first
statistical processing on the change status information for the plurality of
candidate virtual resources to determine whether a high correlation exists
between changes in the loads of the plurality of candidate virtual
resources”), and (3) performing a second statistical processing on the
information to determine whether a high correlation exists between values
above or below a median line (“performing a second statistical processing
on the change status information for the plurality of candidate virtual
resources to determine whether a high correlation exists between load values
above or below a median line in the loads of the plurality of candidate
virtual resources”).8 As identified above, limitation (1) constitutes an

8 The “locating” step broadly encompasses at least identifying virtual
resources “to be located” in a physical resource, allocating virtual resources
to a physical resource, and “determining a suitability of locating the plurality
of virtual resources in a single physical resource.” See, e.g., Spec. ¶¶ 3, 5–7,
8, 14, 17, 20, 21, 23, Figs. 1, 7. Thus, although this step may to some extent
manipulate the results of limitations (1)–(3), as discussed below, we analyze
this step as reciting an additional element in the context of our Step 2A,
Prong Two, analysis. See SiRF Tech., Inc. v. ITC, 601 F.3d 1319, 1333
(Fed. Cir. 2010) (“In order for the addition of a machine to impose a
meaningful limit on the scope of a claim, it must play a significant part in
permitting the claimed method to be performed, rather than function solely
as an obvious mechanism for permitting a solution to be achieved more
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observation that can be performed in the human mind or with the aid of a
pen or pencil and paper. Limitations (2) and (3) constitute evaluations or
judgments that can be performed in the human mind or with the aid of pencil
and paper. Thus, claim 21 recites method steps that “can practically be
performed in the human mind.” October 2019 Update: Subject Matter
Eligibility at 9 (“A claim that encompasses a human performing the step(s)
mentally with the aid of a pen and paper recites a mental process” (emphasis
omitted)). Therefore, we are persuaded that claim 21 recites a patent-
ineligible abstract idea.
D. Step 2A, Prong Two – Claim 21 Integrates the Abstract Idea Into a
Practical Application
Having determined that claim 21 recites abstract ideas, we now
consider whether claim 21 recites additional elements that integrate the
abstract idea into a practical application. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. at 53–55.
As explained in the [2019 Revised Patent Subject Matter
Eligibility Guidance], the evaluation of Prong Two requires the
use of the considerations (e.g. improving technology, effecting a
particular treatment or prophylaxis, implementing with a
particular machine, etc.) identified by the Supreme Court and the
Federal Circuit, to ensure that the claim as a whole “integrates
[the] judicial exception into a practical application [that] will
apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize
the judicial exception.” These considerations are set forth in the
[2019 Revised Patent Subject Matter Eligibility Guidance],

quickly, i.e., through the utilization of a computer for performing
calculations.”).
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MPEP § 2106.05(a) through (c), and MPEP § 2106.05(e)
through (h).
October 2019 Update: Subject Matter Eligibility at 11 (footnotes omitted).
Appellant contends that claim 21 is not directed to an abstract idea
because it “is directed to a specific improvement to a conventional computer
technology (i.e., the provision[ing] of virtual resources to physical
resources). While the claimed invention uses statistical processing,
statistical processing (i.e., ‘organizing information through mathematical
correlation’) is not what the claimed invention is directed to.” Appeal
Br. 14. Appellant explains:
As discussed in the background portion of Appellants’
specification:
In cloud computing, there is an idea known as
provisioning. In provisioning, virtual IT resources
(referred to below as virtual resources) are dynamically
allocated to physical IT resources (referred to below as
physical resources) based on user requests. Provisioning
has already been widely adopted because IT systems can
be quickly and flexibly constructed even in business
situations with large load fluctuations.
However, in provisioning, there is the issue of
determining which virtual resources are to be located in
which physical resource. More specifically, there is the
issue of determining which virtual servers are to be located
in which physical server. Several methods have been
proposed for optimizing placement. One technique
involves a load correlation determined for each virtual
machine; the relative maximum load capacity of each
virtual machine is predicted from the correlation;
combinations are established for each virtual machine so
that the total of each virtual machine server at the predicted
maximum load capacity for each virtual machine does not
exceed the allowable load capacity of the virtual machine
servers; and each virtual machine is allocated in
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accordance with the calculated combinations. (emphasis
added)[.]
Notably, this passage notes how different technologies have been
used to optimize the placement (i.e., provisioning) of virtual
resources into physical resources, which is a well-known
computer technology. The claimed invention improves upon this
conventional technology by providing a particular solution for
provisioning combinations of virtual resources (i.e., multiple
virtual resources) into a single physical resource.
Id. at 9 (quoting Spec. ¶¶ 2–3 (Appellant’s underlining)).
The Examiner finds that the limitations of claim 21 are a combination
of known techniques as evidenced by Appellant’s reliance on the
Background of the Specification.9 Ans. 4–5; see Reply Br. 2; see also
BASCOM, 827 F.3d at 1348 (“[In Enfish, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016)], we found claim language reciting the invention’s
specific improvements to help our determination in step one of the Alice
framework that the invention was directed to those specific improvements in
computer technology. But we also recognized that, ‘in other cases involving
computer-related claims, there may be close calls about how to characterize
what the claims are directed to.’ ‘In such cases,’ we noted, ‘an analysis of
whether there are arguably concrete improvements in the recited computer
technology could take place under step two.’”). However, a combination of
know techniques can integrate an abstract idea into a practical application.

9 We acknowledge that some of the considerations at Step 2A, Prong Two,
properly may be evaluated under the second part of the Alice/Mayo
framework (Step 2B of the Office guidance). See Final Act. 7–8. For
purposes of maintaining consistent treatment within the Office, we evaluate
those considerations under the first part of the Alice/Mayo framework
(Step 2A of the Office guidance). See 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. at 55 nn.25, 27–32.
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See BASCOM, 827 F.3d at 1352. We are persuaded that Appellant’s claim
achieves an improvement in computer technology.10
As noted above, claim 21 recites “[a] method of relocating virtual
resource into a single physical resource.” Appeal Br. 31 (Claims App.)
(emphasis added). In addition to the three above-noted limitations of
acquiring information and performing two distinct statistical processings on
the information, together reciting the abstract idea; claim 21 then recites
“locating, within the single physical resource and based upon both the first
and second statistical processing, the plurality of candidate virtual resources
in the single physical resource.” Id. The act of locating the virtual resources
in the physical resource transforms the physical resource into a new resource
that further includes particularly located virtual resources. Thus, we
conclude claim 21 recites meaningful limitations for locating the candidate
virtual resources in a single physical resource using both of two different
statistical processings of the same acquired change status information. See
Diehr, 450 U.S. at 187 (“Their process admittedly employs a well-known
mathematical equation, but they do not seek to pre-empt the use of that
equation. Rather, they seek only to foreclose from others the use of that
equation in conjunction with all of the other steps in their claimed
process.”); Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057,
1066 (Fed. Cir. 2011) (“The claims of the ’139 and ’739 patents are directed

10 While we do not conflate the determinations of eligibility and
obviousness, we note that the Examiner combines the teachings of Isci and
Yemini to teach or suggest the “locating” step. Final Act. 21–22. The
Examiner expressly finds that a person of ordinary skill in the relevant art
would make this combination “because the combination can provide an
improvement to the computer system.” Ans. 11–12.
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to a method of lowering the risk of chronic immune-mediated disorder,
including the physical step of immunization on the determined schedule.
These claims are directed to a specific, tangible application, as in [Research
Corporation Technologies, Inc. v. Microsoft Corporation, 627 F.3d 859
(Fed. Cir. 2010)], and in accordance with the guidance of Bilski v. Kappos
that ‘[r]ather than adopting categorical rules that might have wide-ranging
and unforeseen impacts,’ exclusions from patent-eligibility should be
applied ‘narrowly,’ we conclude that the subject matter of these two patents
traverses the coarse eligibility filter of § 101.” (citations omitted)); see also
MPEP § 2106.05(e) (“The phrase ‘meaningful limitations’ has been used by
the courts even before Alice and Mayo in various contexts to describe
additional elements that provide an inventive concept to the claim as a
whole.”). As noted above, independent claims 27 and 33 include
corresponding recitations. Id. at 32–33 (claim 27), 33–34 (claim 33).
Considered as a whole, we are persuaded that claim 21 integrates the
abstract idea into a practical application, and, thus, claim 21 is not directed
to an abstract idea. Because claims 27 and 33 recite corresponding
limitations to those of claim 21, we are persuaded that those claims, as well
as the dependent claims, also are not directed to an abstract idea. For this
reason, we need not reach Step 2B of the Alice/Mayo framework, and we do
not sustain the patent ineligibility rejection.
Non-Obviousness
A. Non-Obviousness of Claim 21 Over Sekiguchi, Isci, and Yemini
As noted above, the Examiner rejects independent claim 21 as
obvious over the combined teachings of Sekiguchi, Isci, and Yemini. Final
Act. 7–12, 18–22. In particular, claim 21’s third limitation recites the step of
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“performing a second statistical processing on the change status information
for the plurality of candidate virtual resources to determine whether a high
correlation exists between load values above or below a median line in the
loads of the plurality of candidate virtual resources.” Appeal Br. 31
(Claims App.) (emphasis added). The Examiner finds that this limitation is
missing from the combined teachings of Sekiguchi and Isci, but finds that
Yemini teaches this limitation. Final Act. 20–21.
The Examiner finds that Yemini teaches or suggests:
The server element manager monitors bursty storage I/O usage
[change status information] by one or more virtual machines,
including average I/O flows and correlation of the peak I/O flows
[load values]. For example, four virtual machines shares a
common server and have average I/O flows of 250Mbps,
250Mbps, 200Mbs and 300Mbps (1 Gbps total). If the peak I/O
flows, where the I/O usage is above the average [median line],
are highly correlated, the peaks can generate 5 Gbps [Yemini,
column 18, line 37–40; column 19, line 50 - column 20, line 10].
Final Act. 21 (emphasis added; bracketing in original).
The Examiner also finds that “Yemini teaches an example of four
virtual machines sharing a common server with bursty I/O flows with a
peak/average ratio of five for each virtual machine. In average [median
line], the aggregate demand average of 1 Gbps consumes only 25% of the
HBA capacity.” Id. at 7–8 (italics added; underlining and bracketing in
original). In particular, as the Examiner notes, Yemini discloses:
The aggregate demand average of 1 Gbps consumes only 25% of
the HBA capacity. A resource scheduler may limit its
consideration to only the average demand which, in this case,
would be manageable by the HBA and SAN. However, consider
an alternate scenario where the I/O traffic streams are bursty,
with a peak/average ratio of five for each virtual machine. If the
four I/O streams associated with the virtual machines are
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uncorrelated, their peaks will be likely dispersed and the peak of
the aggregate stream will generally be less than 2 Gbps, which
can be handled by the HBA and SAN with negligible or
relatively few queuing delays.
Yemini, 19:56–67 (emphases added); see Final Act. 21. Thus, the Examiner
relies on Yemini’s teachings that refer to average, not median, values and
the relation of capacity or peak, e.g., a “bursty” value, to an average. See
Appeal Br. 18 (supplying an undated definition of “bursty”).
Initially, the Examiner finds that Yemini’s teaching of an “average”
teaches or suggests the recited “median line.” Final Act. 7–8, 21; Ans. 11.
Appellant disagrees. Appeal Br. 17–18; Reply Br. 3.
In science generally, and, particularly in mathematics and in statistics,
an “average” and a “median” are not the same concept and are determined
differently. The plain and ordinary meaning of median is the middle value
in a number of ordered values, whereas an average or mean is the sum of a
number of values divided by that number. Thus, we interpret the recited
“median line” to be a determined value or level at the median of the number
of values, to which those values then may be compared.
In the claimed method, the load values are determined to be above
(i.e., greater than) or below (i.e., less than) the value or level of the median
line. As the Specification explains, “a median is calculated every hour as an
example of a typical value for the load value of each operation, and the load
value of each operation is assigned a sign depending on whether the load
value of each operation is greater than or less than the median.” Spec. ¶ 42.
Appellant’s Specification also includes the following disclosure:
FIG. 5 shows the sign information stored in the sign
information storage unit 32. This sign information is load value
signs. Each day, a sign is assigned to the load change of each of
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operations A–E depending on whether the load value of each
operation is above or below a median line. More specifically, if
a load value is above the median line, (+) is assigned. If a load
value is below the median line, (-) is assigned. When the load
value is equal to the median, (+) is assigned for convenience.
Id. ¶ 53), see also Fig. 5. Thus, the Specification is clearly directed to
evaluating individual load values with respect to a median value, not to
averages. Consequently, we are not persuaded that Yemini’s averages teach
the recited “median line.”
Regardless, even assuming arguendo that Yemini’s disclosed average
rendered obvious a median line, as noted above; the Examiner’s rejection
remains problematic. The Examiner relies on Yemini’s determination of the
peak/average ratio to teach or suggest the disputed limitations of claim 21.
See Final Act. 22 (citing Yemini, 20:12–15); Ans. 12 (citing Yemini, 20:12–
15). In particular, Yemini further discloses that either the aggregate demand
average is compared to a resource’s load capacity (Yemini, 19:56–60) or a
ratio of the peak load to the average load is calculated and the ratios of
various resources may be compared to determine whether they are correlated
or uncorrelated (id. at 19:60–20:3; see id. at 12:60–63). Specifically,
Yemini discloses, “the allocation of virtual machines to common servers
according to scheduling process 700 may result in substantially de-correlated
peaks and substantially reduce the peak/average ratio seen by servers.”
Yemini, 20:12–15 (emphasis added).
In contrast, claim 21 recites, “performing a second statistical
processing on the change status information for the plurality of candidate
virtual resources to determine whether a high correlation exists between
load values above or below a median line in the loads of the plurality of
candidate virtual resources.” Appeal Br. 31 (Claims App.) (emphasis
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added). Appellant contends, “while the Examiner’s cited passage refers to
average demand, this is not related to determining whether the high
correlation exists. In Yemini, the correlation being contemplated is between
peaks and not load values relative to a median line, as claimed.” Id. at 18.
We agree, and we are persuaded that at least this challenge to the
Examiner’s obviousness rejection of claim 21 identifies dispositive
Examiner error.11
Therefore, we are persuaded that the Examiner erred in rejecting
claim 21 as obvious over the combined teachings of Sekiguchi, Isci, and
Yemini. Consequently, we do not sustain the obviousness rejection of
claim 21.
B. Non-Obviousness of Claims 22–38 Over the Applied References
As noted above, independent claims 27 and 33 recite limitations
corresponding to the disputed limitations of claim 21. Consequently, we are
persuaded that the Examiner erred in rejecting claims 27 and 33 for the same
reasons as claim 21, and we do not sustain the rejection of those claims.
As noted above, except for claim 23, Appellant does not argue the
dependent claims separately from their base claims. See Appeal Br. 23–24,
26–28. We, likewise, do we do not sustain the obviousness rejection of

11 Appellant raises various other contentions challenging the Examiner’s
obviousness rejection of claim 21, as well as of claim 23. In particular,
Appellant contends that the Examiner fails to show that together the
references teach or suggest acquiring change status information and
performing first and second statistical processing on the same acquired
change status information. Appeal Br. 20; Reply Br. 5. Because we find
dispositive error based on the contention discussed above, we do not reach
Appellant’s other contentions.
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claims 22, 23, 25, 26, 28, 29, 31, 32, 34, 35, 37, and 38, each of which
depends directly or indirectly from independent claim 21, 27, or 33.
With respect to the remaining rejection of dependent claims 24, 30,
and 36, the Examiner does not rely on the additionally cited reference, Usa,
to cure the deficiencies noted above. See Final Act. 31–33. For the above
reasons, we do not sustain the rejection of those claims.
DECISION
1. The Examiner erred in rejecting claims 21–38 under 35 U.S.C. § 101,
as directed to patent-ineligible subject matter.
2. The Examiner erred in rejecting claims 21–23, 25–29, 31–35, 37, and
38 under 35 U.S.C. § 103 as rendered obvious over the combined
teachings of Sekiguchi, Isci, and Yemini.
3. The Examiner erred in rejecting claims 24, 30, and 36 under
35 U.S.C. § 103 as rendered obvious over the combined teachings of
Sekiguchi, Isci, Yemini, and Usa.
4. Thus, on this record, claims 21–38 are not unpatentable.
CONCLUSION
We reverse the Examiner’s rejections of claims 21–38.

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In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–38 101 Eligibility 21–38
21–23, 25–
29, 31–35,
37, 38
103 Sekiguchi, Isci,
Yemini
21–23, 25–
29, 31–35,
37, 38
24, 30, 36 103 Sekiguchi, Isci,
Yemini, Usa
24, 30, 36
Overall
Outcome
21–38

REVERSED