Kourosh Modarresi

Patent Trials and Appeals Board

Sep 4, 2019

14097998 - (D) (P.T.A.B. Sep. 4, 2019)

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.
14/097,998 12/05/2013 Kourosh Modarresi AD01.3145US01 4083
111003 7590 09/04/2019
Adobe / Finch & Maloney PLLC
50 Commercial Street
Manchester, NH 03101
EXAMINER
ANDERSON, FOLASHADE
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
09/04/2019 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):
docketing@finchmaloney.com
nmaloney@finchmaloney.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KOUROSH MODARRESI
____________

Appeal 2018‐005855
Application 14/097,9981
Technology Center 3600
____________

Before DAVID M. KOHUT, IRVIN E. BRANCH, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.

LENTIVECH, Administrative Patent Judge.

DECISION ON APPEAL2
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellant, the real party in interest is “Adobe Systems
Incorporated.” Br. 2.
2 We reference, herein, the Final Action mailed June 9, 2017 (“Final”),
Appeal Brief filed January 30, 2018 (“Br.”), Examiner’s Answer mailed
March 29, 2018 (“Ans.”), Reply Brief filed May 17, 2018 (“Reply”), and
Specification filed December 5, 2013 (“Spec.”).
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STATEMENT OF THE CASE
Appellant’s Invention
The invention relates to “techniques for predicting outcomes of a
modeled system by dynamically adjusting one or more input or output
variables.” Spec. ¶ 1. Claim 1 is illustrative of the claimed invention and
reproduced, below, with emphasis on “additional elements” (explained
infra).
1. A computer-implemented method comprising:
receiving, by an analytics engine comprising a computer
processor implemented at least in part in hardware, and from a
database in electronic communication with the processor,
analytical data representing a plurality of website metric
variables;
computing, by the processor, at least one missing value in the
analytical data based on non-missing values in the analytical
data using a regularized singular value decomposition;
designating one of the variables as an output variable and each
of the remaining variables as input variables;
computing, by the processor, first result data representing a
quantifiable effect of one of the input variables on the output
variable relative to at least one of the other input variables
based on the analytical data by perturbing each of the input
variables using a plurality of different values, and computing a
magnitude of increase in an error of the output variable
resulting from the plurality of perturbations of each of the input
variables; and
presenting, via a graphical user interface, the first result data in
human readable form.
App. Br. 17 (Claims Appendix).
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Rejections
Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final 8–14.
Claims 1–20 stand rejected under 35 U.S.C. § 103 as obvious over
Sadegh (US 2012/0150764 A1; June 14, 2012), Bernat, G. “Analysis of Data
Mining and recommendation Service; Open Source Solutions on a Scalable
Framework” (Master Thesis), University of Technology and Economics of
Budapest (May 16, 2013), and Pattipatti (US 2006/0064291 A1; Mar. 23,
2006). Final 14–30.
REJECTION UNDER 35 U.S.C. § 101
PRINCIPLES OF LAW
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
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014) (internal quotation marks and citation omitted).
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)
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(“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, 69 (1972)). Concepts
determined to be patent-eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 184 n.7 (quoting Corning v. Burden,
56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at
69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme 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. (citing Benson and Flook); see e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
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to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we 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 (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.
PTO GUIDANCE
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”). Under the Guidance, 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 interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (MPEP) § 2106.05(a)–(c), (e)–(h) (9th Ed.,
Rev. 08.2017, Jan. 2018)).
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See Guidance, 84 Fed. Reg. at 52, 54–55. Only if a claim (1) recites a
judicial exception and (2) does not integrate that exception into a practical
application, we conclude the claim is directed to a judicial exception (id. at
54) and then look to whether the claim:
(3) adds a specific limitation or combination of limitations
beyond the judicial exception that are not “well-understood,
routine, conventional” activity 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 Guidance, 84 Fed. Reg. at 56.
ANALYSIS
Claim 1 is representative of the group comprising claims 2–20. See
37 C.F.R. § 41.37(c)(1)(iv). There is no dispute that claim 1 falls within a
category of patentable subject matter. See 35 U.S.C. § 101 (“process,
machine, manufacture, or composition of matter”); see also Guidance, 84
Fed. Reg. at 53–54 (“Step 1”). We accordingly turn to the issues raised by
the Guidance and Appellant’s arguments.
Step 2A, Prong One:3 Does the Claim Recite
Any Judicial Exceptions
Turning to the first issue set forth by the Guidance (see supra 5, bullet
“(1)”), we agree with the Examiner that claim 1 recites judicial exceptions.

3 The Guidance separates the enumerated issues (1) to (4) (see supra 6) into
Steps 2A(1), 2A(2), and 2B, as follows:
[T]he revised procedure . . . focuses on two aspects [of whether
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Specifically, we agree with the Examiner’s corresponding identification of
the following claim limitations:
computing . . . at least one missing value in the analytical data
based on non-missing values in the analytical data using a
regularized singular value decomposition;
. . .
computing . . . first result data representing a quantifiable effect
of one of the input variables on the output variable relative to at
least one of the other input variables based on the analytical
data by perturbing each of the input variables using a plurality
of different values, and computing a magnitude of increase in
an error the output variable resulting from the plurality of
perturbations of each of the input variables[.]
Ans. 4 (emphases omitted). We also agree these limitations recite
mathematical formulas because of: “computing . . . at least one missing
value in the analytical data based on non-missing values in the analytical

a claim is “directed to” a judicial exception under the first step
of the Alice/Mayo test (USPTO Step 2A)]: (1) [w]hether the
claim recites a judicial exception; and (2) whether a recited
judicial exception is integrated into a practical
application. [W]hen a claim recites a judicial exception and
fails to integrate the exception into a practical application,
. . . further analysis pursuant to the second step of the
Alice/Mayo test (USPTO Step 2B) . . . is needed . . . in
accordance with existing USPTO guidance as modified in April
2018.[footnote omitted]
84 Fed. Reg. at 51 (referencing, via the omitted footnote, “USPTO
Memorandum of April 19, 2018, ‘Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.)’ (Apr. 19, 2018), available at https://
www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF [ . . . ’USPTO Berkheimer Memorandum’].”).
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data using a regularized singular value decomposition;” and “computing
. . . first result data representing a quantifiable effect of one of the input
variables on the output variable relative to at least one of the other input
variables based on the analytical data” the claimed computations are a matter
of mere mathematical computation. Id. at 5 (original ellipses).
We add that the un-emphasized features of reproduced claim 1
(supra 2, un-italicized features) fall within the Guidance’s following
categories of judicial exceptions: “(a) Mathematical concepts—
mathematical relationships, mathematical formulas or equations,
mathematical calculations” (Guidance, 84 Fed. Reg. at 52); and “(c) Mental
processes—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion)” (id.). And, the Specification
evidences so by stating the invention’s steps: “determine which input
variables have the greatest effect on an output variable . . . [and] ascertain
the value(s) of one or more input variables that result in a targeted output
variable . . . [by] using multiple linear regression analysis, time series
analysis, and ensemble learning methods” (Spec. ¶ 10); “[estimate] the
relationships between the variables . . . by computing the impact or effect of
varying . . . input variables on . . . output variables using regression analysis
and/or a decision tree learning” (id. ¶ 11); set a matrix’s columns as
respective variables (i.e., one per attribute), set its rows as respective sets of
inputs (e.g., one per person), and use “regularized singular value
decomposition (RSVD) technique . . . to estimate the missing entries”
(id. ¶ 24). See also id. ¶¶ 25–42.
We also add that the claimed analytical data’s representation of
website metric variables (“analytical data representing a plurality of website
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metric variables”) constitutes a judicially-recognized abstraction, because
the representation constitutes ‘printed matter’ that is not functionally related
to the claimed method. See Praxair Distribution, Inc. v. Mallinckrodt
Hosp. Prod. IP Ltd., 890 F.3d 1024, 1031–33 (Fed. Cir. 2018). That is, the
claimed representation limits the content of information (“representing a
plurality of website metric variables”) and is not interrelated with the rest of
the claim (does not impact how the claimed steps are performed). Id. Such
claim features fall outside the scope of 35 U.S.C. § 101. Id. at 1032.
For the foregoing reasons, we find claim 1 recites judicial exceptions.
Step 2A, Prong Two: Are the Recited Judicial Exceptions
Integrated Into a Practical Application?
Turning to the second issue set forth by the Guidance (see supra 5,
bullet “(2)”), we agree with the Examiner that the judicial exceptions are not
integrated into a practical application. See Guidance, 84 Fed. Reg. at 53
(describing a “practical application” as a “meaningful limit on the [recited
judicial exceptions], such that the claim is more than a drafting effort
designed to monopolize the [exceptions]”). Specifically, we agree claim 1
recites “the claimed hardware [as] generic [and] does not provide [a] means
of achieving the results.” Ans. 23. We also agree the Answer’s following
quote (Ans. 3) of Alice’s syllabus describes the claimed implementation of
the judicial exceptions:
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Wholly generic computer implementation is
not generally the sort of “additional featur[e]” that provides any
“practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.” Mayo,
supra, at ––––, 132 S.Ct., at 1297.
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Alice, 134 S.Ct. at 2350–51.
We add that the emphasized features of reproduced claim 1 (supra 2,
italicized features) are plainly additional elements. They are recited as,
in toto, a computer (“an analytics engine comprising a computer processor
implemented at least in part in hardware”) connected to a database
(“database in electronic communication with the processor”) and configured
for: receiving data (“analytical data”); using a regularized singular value
decomposition to compute a missing value based on non-missing values;
designating a variable of the data as an output and the remaining variables as
inputs; computing an effect of each input variable on the output variable,
relative to the other input variables, by perturbing each input variable and
computing a change of the output variable; and presenting the effect on a
graphical user interface. The claimed technology is, therefore, recited as a
computer configured to implement “mathematical relationships,
mathematical formulas or equations, mathematical calculations” (Guidance,
54 Fed. Reg. at 52). The claimed technology is not recited as, for example, a
particular technological solution to a problem, particular machine, particular
transformation of an article to a different state, or other meaningful
restriction of scope. See Guidance, 84 Fed. Reg. at 55 (“exemplary
considerations . . . indicative [of] a practical application”).
For the foregoing reasons (of the last two sections), we find claim 1 is
directed to the recited judicial exceptions—not to a practical application
thereof.
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Step 2B: Does the Claim Recite Anything That Is
Beyond the Recited Judicial Exceptions and Not a Well-Understood,
Routine, Conventional Activity?
Turning to the third and fourth issues set forth by the Guidance (see
supra 6, bullets “(3)” and “(4)”), we agree with the Examiner that the
claimed invention does not comprise any features that are neither a judicial
exception nor “well-understood, routine, conventional.” 84 Fed. Reg. at 56.
Specifically, we agree the Specification describes the claimed analytics
engine (which receives the analytical data and performs both computing
steps) as a general purpose computer. Ans. 23. As the Examiner finds:
The instant Specification states “the analytics engine 132 may
be implemented locally on the user computing system 110[.]
One or more data warehouses 140 operatively connected to the
server 130 and the analytics engine 132 can be configured to
store analytical data regarding the activities and interactions of
one or more users with a website, and/or other data created and
maintained by the analytics engine.” (Spec. [14]) Nothing
within the Specification or the claims indicates that the claimed
hardware is anything other than general purpose computer.
Ans. 23.
We add that the only other claimed technology is a graphical user
interface (“GUI”) that merely presents the invention’s computed results “in
human readable form” (claim 1). The claimed designating step is not
ascribed to any device, software, etc.
We also add that the Specification describes the invention’s “system
architecture” (Spec. ¶¶ 14–15) and “example computing device” (id. ¶¶ 16–
22) as achieved via off-the-shelf components in their typical configuration.
And, the Specification states the invention’s “example methodologies”
(id. ¶¶ 23–42) can be performed by the above-discussed analytics engine,
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i.e., a general purpose computer (above block quote). See also id. ¶ 23
(“methodology 300 may be implemented, for example, by the analytics
engine”).
For the foregoing reasons (of the last three sections), we find claim 1
amounts to generic computer components that perform only their generic
functions (i.e., what these components ubiquitously do as a class) and do so
to merely apply the recited judicial exceptions. See Guidance, 84 Fed. Reg.
at 55 (“apply it” bullet corresponding to the Guidance’s footnote 30).
That is, claim 1 amounts to “mere instructions to apply a judicial exception.”
Id. at n. 30; see also MPEP § 2106.05(f) (cited by the Guidance’s
footnote 30 as instructive for this issue).
Appellant’s Arguments
Appellant contends the Examiner errs in relying on Elec. Power
Grp. App. Br. 5–6. Specifically, Appellant contends claim 1 recites a
“technical means” differentiating the invention from Elec. Power Grp. as
follows:
[Claim 1] specifically defines that analytical data is received by
an analytics engine implemented at least partly in hardware, and
that a processor is specifically configured to compute result
data by perturbing each of the variables and computing the
effect of such perturbations, which improves the functionality
of the hardware in a specific way. This is contrast to the
claims in Electric Power Group, where the court [in] found an
ineligible abstract process that was not limited to a technical
means for performing the functions.
App. Br. 6.
We are unpersuaded. Appellant argues, by reference to Elec. Power
Grp., claim 1 is directed to a technical means—not judicial exceptions.
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App. Br. 6. We disagree for reasons better reflected by McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1311 (Fed. Circ. 2016). As
explained in McRO, a claim reciting a judicial exception is nonetheless
patent-eligible if reciting a mechanism that prevents preemption of the
exception. Id. at 1314. McRO states:
The preemption concern arises when the claims are not directed
to a specific invention and instead improperly monopolize the
basic tools of scientific and technological work. . . . A patent
is not good for an effect, or the result of a certain process
because such patents would prohibit all other persons from
making the same thing by any means whatsoever. A patent
may issue for the means or method of producing a certain
result, or effect, and not for the result or effect produced. We
therefore look to whether the claims in these patents focus on a
specific means or method that improves the relevant technology
or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and
machinery.
Id. (citations and quotation marks omitted). Appellant’s argued
claim features do not overcome these concerns. App. Br. 7. For example,
the claimed perturbation—“perturbing each of the input variables using a
plurality of different values, and computing a magnitude of increase in an
error of the output variable”—is perhaps a specific process but also a basic
tool of mathematics. See Ans. 33 (“The Office understands perturbing
. . . [as] commonly understood to mean[,] in mathematics, [a] method for
solving a problem[.]”); see also Clapham et al., The Concise Oxford
Dictionary of Mathematics (Oxford New York: Oxford University Press,
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2009)4 (defining “perturbation” as a “small change in the parameter values
in an equation or optimization problem”). Accordingly, the claimed
perturbation does not prevent preemption.
Appellant similarly contends the claimed perturbation compels a
finding of patent-eligibility under Bascom Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) and Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
App. Br. 7–8; Reply 3–4. We are unpersuaded. Like the claim of McRO,
the Court found the claims of Bascom and Amdocs are patent-eligible
because they recite a mechanism that prevents preemption. Bascom, 827
F.3d at 1350–52; Amdocs, 841 F.3d at 1311–12. As discussed, we find the
claimed perturbation does not overcome this hurdle.
Appellant also contends the Examiner errs in relying on FairWarning
IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089 (Fed. Cir. 2016). App. Br. 8–9;
Reply 2–3. Specifically, Appellant contends claim 1 recites new analytical
tools differentiating the invention from FairWarning as follows:
In FairWarning, . . . the Federal Circuit found that the
claims . . . “merely implement an old practice in a new
environment.” . . . But the same cannot be said of the pending
claims. Here, the Examiner has not pointed to any evidence
that humans have provided tools for determining outcomes
resulting from predictable and unpredictable future user activity
at a website or changes in other input variables based on
analytical data collected on prior user behavior at a website.

4 Also available at https://www.oxfordreference.com/view/10.1093/
acref/9780199235940.001.0001/acref-9780199235940-e-2164?rskey=
WrYSl3&result=2204)
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App. Br. 8 (citing FairWarning, 839 F.3d at 1093–95; footnotes omitted;
original emphasis). We are unpersuaded for each of two reasons.
First, we find that limiting the claimed invention to analyses of
website metrics does not create a “specific means . . . [of] technology”
(McRO, 837 F.3d at 1314). Rather, we find it restricts the claimed invention
to a field of use. See Bilski, 561 U.S. at 612 (“[L]imiting an abstract idea to
one field of use . . . [does] not make the concept patentable”).
Second, even assuming an improved perturbation for analyzing
website metrics, we find the improvement lies in combining two judicial
exceptions—mathematical concepts (claimed perturbation) and a ‘printed
matter’ abstraction (claimed analytical data’s representation of website
metric variables). See supra 8–9. Judicial exceptions cannot alone
transform a claimed invention into patent-eligible subject matter. SAP Am.,
Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018), cert. denied,
139 S. Ct. 2747 (2019) (“[An] advance [that] lies entirely in the realm of
abstract ideas . . . is ineligible for patenting.”).
Appellant also contends the Examiner errs in finding claim 1 recites
an abstract “idea of itself.” App. Br. 9–11. Specifically, Appellant contends
“[t]his descriptor fails to provide the degree of clarity necessary for
. . . conclusions and reasons in support of the rejection.” Id. at 9.
We are unpersuaded. The Examiner uses “idea of itself” to convey
that claim 1 recites generic computer components performing their generic
functions to merely ‘apply’ an abstract idea. Ans. 3, 30–31; Final 3. We
find that such a claim indeed seeks a patent on an abstract ‘idea of itself’
inasmuch, as explained by Alice, “[a]n idea ‘of itself’ means that the claim,
in practical effect, recites little else than the abstract idea.” Alice, 573
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U.S. at 218; see also id. at 223–24 (“[W]holly generic computer
implementation is not generally . . . more than a drafting effort designed to
monopolize the abstract idea itself.” (internal syntax and citations omitted)).
Appellant also contends, pursuant to Berkheimer v. HP Inc., 881 F.3d
1360 (Fed. Cir. 2018), the Examiner must present evidence that the claimed
additional elements impart only “well-understood, routine, conventional”
activities. Reply 2–3 (citing 881 F.3d at 1360, 1369).
We are unpersuaded. The Examiner must present one of several
specific types of evidence if/when finding an additional element yields only
“well-understood, routine, conventional” activities. See USPTO Berkheimer
Memorandum 3 (“[A]n additional element (or combination of elements) is
not well-understood, routine or conventional unless the examiner finds, and
expressly supports a rejection in writing with, one or more of the following
. . .”); see also supra fn. 2 (addressing the Memorandum). As discussed, the
Examiner instead finds the claimed additional elements constitute mere
instructions to apply an abstract idea on a computer. See supra 9–11,
16. Neither Berkheimer nor the USPTO Berkheimer Memorandum concerns
mere instructions to ‘apply’ a judicial exception on a computer. See USPTO
Berkheimer Memorandum, 1–2 (“Berkheimer informs the inquiry into . . .
well-understood, routine, conventional activity.”). USPTO procedures
remain unchanged as to finding additional elements constitute such
instructions. See id. at 3 (“This memorandum revises . . . MPEP
§ 2106.07(a) . . . and . . . (b)); Guidance 84 Fed. Reg. at 55 n. 30 (“See
MPEP 2106.05(f) for . . . mere instructions to apply a judicial exception”);
see also MPEP 2106.05(f) (“[T]he well-understood, routine, conventional
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consideration (see MPEP § 2106.05(d)) . . . may assist . . . a determination
of . . . mere instructions to apply an exception.” (emphasis added)).
Conclusion
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1–20 under 35 U.S.C. § 101.
REJECTION UNDER 35 U.S.C. § 103
A dispositive issue for the prior art rejection is whether the Examiner
erred in addressing the claimed perturbation. Similar perturbation is recited
by independent claims 8 and 15. Each of the remaining claims depends
from one of claims 1, 8, and 15.
Regarding the claimed perturbation, the Examiner finds:
Pattipatti teaches based on the analytical data by perturbing
each of the input variables using a plurality of different
values. The Office understands perturbing to be a term of art
not expressly defined by the specification, but commonly
understood to mean in mathematics, method for solving a
problem by comparing it with a similar one for which the
solution is known. Usually the solution found in this way is
only approximate. The Office maintains that Pattipatti the
limitation in question [42] “cause-effect dependencies on a
structural model. . . . Multi-signal dependency modeling may
be employed in order to maintain conformity with the physical
structure of the system. This modeling technique has the
benefit of capturing the useful and important knowledge about
the system for fault diagnosis without unnecessary details.”
Specifically, Pattipatti teaches, computing a magnitude of
increase in an error of the output variable resulting from the
plurality of perturbations of each of the input variables. The
Office maintains that [58] “Parity relations are rearranged forms
of the input-output or state-space models of the system
. . . essential characteristic of this approach is to check for
consistency of the inputs and outputs. Under normal operating
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conditions, the magnitudes of residuals or the values of parity
relations are small” would render claimed invention obvious in
combination with the other cited references.
Ans. 33–34 (original emphases and ellipses); see also Final 17–18.
Appellant contends the Examiner erred because Pattipatti’s above
“[p]arity relations are not perturbative; rather, the process model and the
process use the same, fixed input parameters so that the residual, and thus
the fidelity of the model, can be determined accurately.” Reply 4 (original
emphasis). Appellant also contends that “[p]arity relations are used to
determine the accuracy of a given process model against a real process using
fixed input parameters ‘to check for consistency of the inputs and outputs’
between the model and the process.” Id. (quoting Pattipatti ¶ 58). Appellant
further contends that Pattipatti’s “disclosed equations represent operations
on an array of measured (not perturbed) variables (i.e., variables measured
from testing a real or modeled system): . . . measurements of input and
output variables . . . are not perturbations of variables.” App. Br. 14
(original emphasis).
We are persuaded inasmuch the preponderance of evidence and
argument weighs in Appellants’ favor. See In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992) (“In reviewing the examiner's decision on appeal, the
Board must necessarily weigh all of the evidence and argument.”). We find
so for three reasons.
First, the Examiner characterizes “perturbation” as a term of art. Yet,
the Examiner does not show the term’s use anywhere within either Pattipatti
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or its incorporated references, which are incorporated to explain the cited
modeling in detail.5 See e.g., Ans. 33–34.
Second, the Examiner has not shown Appellant mischaracterizes
Pattipatti’s parity relations as merely comparing a measured cause-effect
dependency of one system (e.g., monitored) against a corresponding
dependency of another system (e.g., theoretical). Id. The Examiner
responds only that “perturbation” means comparing the same cause-effect
dependency of two systems. Id. at 33. This purported meaning is, however,
neither clearly articulated nor supported. Id.
Third, we find the Specification is most consistent with Appellant’s
argument. The Specification describes the invention as “determin[ing]
which input variable(s) . . . , when changed, have the greatest effect on
changing the designated output variable.” Spec. ¶ 33. The effect is
determined for a matrix representing the parameters of a singular model,
whereby the columns represent respective input and output variables for
website traffic data (e.g., average visit length). Id. ¶¶ 23–42. We find that
this description does not comport with the Examiner’s view that the claimed
perturbation measures and compares corresponding parameters of two
models. Id. Rather, we find that this description conveys a technique of
assessing a singular model by formulaically executing changes to input

5 Cited paragraph 42 incorporates Sen et al., “Simulation-based testability
analysis and fault diagnosis,”AUTOTESTCON ‘96, pp. 136–148,
1996. Cited paragraph 58 incorporates: Isermann, R., “Supervision, fault-
detection and fault-diagnosis methodsan introduction,” Control
Eng. Practice, Vol. 5, No. 5, pp. 639–652, 1997; Gertler et al., “Generating
directional residuals with dynamic parity relations, “Automatica, Vol. 33,
No. 4, pp. 627–635, 1995; and Gertler, “Fault detection and isolation using
parity relations, “Control Eng. Practice, Vol. 5, No. 5, pp. 1385–1392, 1995.
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variables and tracking their effects on a designated output variable. Id. In
accord with this interpretation, a mathematics dictionary defines
“perturbation” as a “small change in the parameter values in an equation or
optimization problem, usually done to investigate the stability of a situation
or to help identify the required solution.” Clapham. Oxford dictionary of
mathematics (fully cited at supra 13). As Appellant argues, the Examiner
does not identify such a technique within Pattipatti’s teachings.
For the foregoing reasons, we do not sustain the Examiner’s rejection
of claims 1–20 under 35 U.S.C. § 103.
DECISION
We affirm the rejection of claims 1–20 under 35 U.S.C. § 101.
We reverse the rejection of claims 1–20 under 35 U.S.C. § 103.
Because at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner is affirmed.
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).
AFFIRMED