Marin Litoiu et al.

Patent Trials and Appeals Board

Oct 11, 2019

12023708 - (D) (P.T.A.B. Oct. 11, 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.
12/023,708 01/31/2008 Marin Litoiu CA920070180US1 7886
130827 7590 10/11/2019
The Steadman Law Firm PLLC
5968 Dutchman Creek Road
Southport, NC 28461
EXAMINER
YOUNG, ASHLEY YA-SHEH
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
10/11/2019 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):
astead@thesteadmanlawfirm.com
asteadlaw@gmail.com
firm@thesteadmanlawfirm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARIN LITOIU, KARL PIERRE WECKWORTH, and
ALEXEI LAPOUCHNIAN
____________

Appeal 2018-004414
Application 12/023,708
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Marin Litoiu, Karl Pierre Weckworth, and Alexei Lapouchnian
(Appellant2) seeks review under 35 U.S.C. § 134 of a non–final rejection of
claims 1–7, 11–14, 18–22, 24, and 27–29, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellant invented a way of business process adaptation using
goal modeling and analysis. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 21, which is reproduced below (bracketed matter and some
paragraphing added).
21. A method comprising:
configuring a computer system including hardware to perform
the following steps:
[1] eliciting a high–variability goal model (HVGM) for a
business process,
wherein the HVGM captures and refines business process
goals while modeling alternative options for attaining the
business process goals,
and
wherein the HVGM captures quality attributes used in an
evaluation of a performance of the business process and

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed October 12, 2017) and Reply Brief (“Reply Br.,” filed March 23,
2018), and the Examiner’s Answer (“Ans.,” mailed January 24, 2018) and
Non-Final Action (“Non-Final Act.,” mailed May 15, 2017).
2 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
International Business Machines Corporation (Appeal Br. 3).

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an estimation of how various alternative options affect
the quality attributes;
[2] generating a workflow–level high–variability executable
model (HVEM) of the business process from the HVGM
by mapping the business process goals to control flow
constructs based on annotations specified in the HVGM;
[3] deploying an instance of the HVEM;
[4] executing the business process using the instance of the
HVEM;
[5] monitoring the execution of the business process via a
business process monitoring infrastructure;
[6] receiving from stakeholders updated preferences with
respect to the business process,
wherein the updated preferences change priorities or
other parameters with respect to the quality attributes;
[7] selecting a process alternative among the alternative
options,
wherein selecting the process alternative comprises
analyzing results of the monitoring and the
updated preferences
and
planning reconfiguration changes with respect to
the instance of the HVEM via a manager module
within an autonomic element;
and
[8] reconfiguring the instance of the HVEM based on the
selected process alternative,
wherein reconfiguring the instance of the HVEM
comprises executing the reconfiguration changes via the
manager module.
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The Examiner relies upon the following prior art:
Name Reference Date
Bonabeau US 2001/0053991 A1 Dec. 20, 2001
Hintermeister US 2006/0085790 A1 Apr. 20, 2006
Talekar, Model, publish, and review: Integrating WebSphere Business
Modeler 6.0.1 and WebSphere Business Modeler Publishing Server
6.0.1, Oct. 18, 2006
Claims 1–7, 11–14, 18–22, 24, and 27–29 stand rejected under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more.
Claims 1–7, 11, 12, 18–22, 24, and 27–29 stand rejected under
35 U.S.C. § 102(b) as anticipated by Bonabeau.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Bonabeau and Hintermeister.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Bonabeau and Talekar.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of novelty and obviousness matter turn primarily on
whether Bonabeau describes the recited autonomic element.
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FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of
“autonomic element.”
02. The ordinary meaning of “autonomic,” outside a physiological
context, is resulting from internal stimuli; spontaneous.3
Facts Related to Appellant’s Disclosure
03. The Specification describes an autonomic element as follows.
FIG. 5 illustrates an autonomic element 500 that can be
used in configuring and monitoring the models. In an
autonomic computing system as in the present
embodiments, an Autonomic Manager (AM) 502 controls
its Managed Element (ME) 504 by configuring (514) it,
monitoring (516) its performance, deliberating about the
needed changes in the ME and executing the changes
(using modules 507, 508, and 509 that analyze, plan and
execute respectively). Collectively the AM 502 and the
ME 504 are called the Autonomic Element 500. The
decisions made by an AM 502 are based on the
knowledge about the ME 504 and its environment. This
knowledge is usually made available to the AM 502 in
the form of various models. As shown in FIG. 5, the
AM 502 manages the deployed high-variability business
processes and their knowledge is provided by the
enriched high-variability goal models 510. In one
particular embodiment, an external infrastructure (such as
the WebSphere Business Monitor) or monitor 506 is used
to monitor the deployed processes. The analysis of the

3 The American Heritage Dictionary.
https://www.ahdictionary.com/word/search.html?q=autonomic
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monitoring results 516 for a BP as well as the updated
stakeholder preferences 512 may result in the change in
the process configuration 514. The adaptation of the
ME 504 is done by providing it with the new
configuration.
Spec. para. 33.
Facts Related to the Prior Art
Bonabeau
04. Bonabeau is directed to generating new business models in an
environment, or ecosystem, of existing business models and
customers. Bonabeau para. 2.
ANALYSIS
Initially we construe the limitation autonomic element. This is not
lexicographically defined. The ordinary meaning of “autonomic” is the
attribute of resulting from internal stimuli; spontaneous. FF 01 and 02.
Collectively an Autonomic Manager (AM) and its Managed Element (ME)
are called the Autonomic Element. An Autonomic Manager (AM) controls
its Managed Element (ME) by configuring it, monitoring its performance,
deliberating about the needed changes in the ME and executing the changes.
FF 03. Thus, an autonomic element is some software or hardware element
that controls a managed element by configuring, monitoring performance of,
and deliberating and executing needed changes of a managed element. The
Specification does not narrow the structure or manner of implementation for
these functions.
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Claims 1–7, 11–14, 18–22, 24, and 27–29 rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more
STEP 14
Claim 21, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that question, . .
. consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp., Pty. Ltd. v CLS Bank Intl, 573 U.S. 208, 217–18 (2014)
(citations omitted) (citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first
determine what the claims are directed to. This begins by determining
whether the claims recite one of the judicial exceptions (a law of nature, a
natural phenomenon, or an abstract idea). Then, if claims recite a judicial

4 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019)
(“Revised Guidance”).
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exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception, i.e., that the claims “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.” Revised Guidance at 54. If
the claims are directed to a judicial exception, then finally determining
whether the claims provide an inventive concept because the additional
elements recited in the claims provide significantly more than the recited
judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 21 recites eliciting a model, generating and deploying an instance of a
model, executing and monitoring a business process using the model,
receiving preference data, selecting a process alternative, and reconfiguring
the instance of the model. Eliciting a model is receiving data describing the
model. Generating and deploying a model is updating and transmitting data
describing the model. Executing and monitoring a business process on a
computer is generic computer processing. Selecting an alternative is data
reception. Reconfiguring a model is updating model data. Thus, claim 21
recites receiving, updating, transmitting, and processing data. None of the
limitations recite technological implementation details for any of these steps,
but instead recite only results desired by any and all possible means.
From this we see that claim 21 does not recite the judicial exceptions
of either natural phenomena or laws of nature.
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Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts5, (2) certain methods of organizing
human activity6, and (3) mental processes7. Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 21 recites the concept of
business processes. Specifically, claim 21 recites operations that would
ordinarily take place in advising one to reconfigure a model with selected
stakeholders options after executing a generic process based on the model as
developed from received and generated data. The advice to reconfigure a
model with selected stakeholders options after executing a generic process
based on the model as developed from received and generated data involves
performing a business process, which is a commercial act, and updating the
process, which is an act ordinarily performed in the stream of commerce.
For example, claim 21 recites “executing the business process,” which is an
activity that would take place whenever one is in commerce. Similarly,

5 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
6 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
7 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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claim 1 recites “selecting a process alternative,” which is also characteristic
of adapting in commerce.
The Examiner determines the claims to be directed to business process
adaptation. Non-Final Act. 16.
The preamble to claim 21 does not recite what it is to achieve, but the
steps in claim 21 result in running some generic business process and
reconfiguring a model absent any technological mechanism other than a
conventional computer for doing so.
As to the specific limitations, limitations 1, 5, and 6 recite data
reception. Limitations 2–4, 7, and 8 recite insignificant receiving, updating,
transmitting, and processing of model data, which advise one to apply
generic functions to get to these results. The limitations thus recite advice
for reconfiguring a model with selected stakeholders options after executing
a generic process based on the model as developed from received and
generated data. To advocate reconfiguring a model with selected
stakeholders options after executing a generic process based on the model as
developed from received and generated data is conceptual advice for results
desired and not technological operations.
The Specification at paragraph 1 describes the invention as relating to
business process adaptation using goal modeling and analysis. Thus, all this
intrinsic evidence shows that claim 21 is directed to modelling and executing
business processes, i.e., to business processes. This is consistent with the
Examiner’s determination.
This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity, because business processes are
routines performed in commerce. The concept of business processes as
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exemplified by reconfiguring a model with selected stakeholders options
after executing a generic process based on the model as developed from
received and generated data is one idea for adapting such business processes.
The steps recited in claim 21 are part of how this might conceptually be
premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Affinity Labs of Texas, LLC v.
Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (tailoring content);
Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758
F.3d 1344, 1351 (Fed. Cir. 2014) (altering data); Content Extraction and
Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343, 1347 (Fed.
Cir. 2014) (data collection, recognition, and storage).
Alternately, this is an example of concepts performed in the human
mind as mental processes, because the steps of receiving, updating,
transmitting, and processing data mimic human thought processes of
observation, evaluation, judgment, and opinion, perhaps with paper and
pencil, where the data interpretation is perceptible only in the human mind.
See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed.
Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–
94 (Fed. Cir. 2016). Claim 21, unlike the claims found non-abstract in prior
cases, uses generic computer technology to perform data reception, update,
transmission, and processing, and does not recite an improvement to a
particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016) (finding claims
not abstract because they “focused on a specific asserted improvement in
computer animation”). As such, claim 21 is directed to receiving, updating,
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transmitting, and processing data, and not a technological implementation or
application of that idea.
From this we conclude that at least to this degree, claim 21 is directed
to business processes by reconfiguring a model with selected stakeholders
options after executing a generic process based on the model as developed
from received and generated data, which is a commercial and legal
interaction, one of certain methods of organizing human activity identified in
the Revised Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 21 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e., integrated into a practical application.8
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions . . . embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena, or abstract ideas.”
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of
such concepts “‘to a new and useful end,’” we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the “‘buildin[g] block[s]’” of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,

8 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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devoid of implementation details. Steps 1, 5, and 6 are pure data gathering
steps. Limitations describing the nature of the data do not alter this.
Steps 2–4, 7, and 8 recite generic computer processing expressed in terms of
results desired by any and all possible means and so present no more than
conceptual advice. All purported inventive aspects reside in how the data is
interpreted and the results desired, and not in how the process physically
enforces such a data interpretation or in how the processing technologically
achieves those results.
We next focus on the claim limitation “via a manager module within
an autonomic element” in limitation 7. We construed this autonomic
element as some software or hardware element that controls a managed
element by configuring, monitoring performance of, and deliberating and
executing needed changes of a managed element, supra. This is at best
conceptual advice for automating such functions, as there are technological
implementation details neither in the Specification nor in the claims. Simply
to label the bundle of such functions is insufficient to find structural or
technological support for this limitation.
Viewed as a whole, Appellant’s claim 21 simply recites the concept of
business processes as exemplified by reconfiguring a model with selected
stakeholders options after executing a generic process based on the model as
developed from received and generated data as performed by a generic
computer. This is no more than conceptual advice on the parameters for this
concept and the generic computer processes necessary to process those
parameters, and do not recite any particular implementation.
Claim 21 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
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technology or technical field. The 15 pages of specification do not bulge
with disclosure, but only spell out different generic equipment9 and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of business
processes by reconfiguring a model with selected stakeholders options after
executing a generic process based on the model as developed from received
and generated data under different scenarios. They do not describe any
particular improvement in the manner a computer functions. Instead,
claim 21 at issue amounts to nothing significantly more than an instruction
to apply business processes by reconfiguring a model with selected
stakeholders options after executing a generic process based on the model as
developed from received and generated data using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that

9 The Specification describes a general purpose computer system. Spec.
para. 39.
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the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 21 is directed to achieving the result of
business processes by advising one to reconfigure a model with selected
stakeholders options after executing a generic process based on the model as
developed from received and generated data, as distinguished from a
technological improvement for achieving or applying that result. This
amounts to commercial or legal interactions, which fall within certain
methods of organizing human activity that constitute abstract ideas. The
claim does not integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether claim 21 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
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process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, updating, transmitting, and processing data amounts
to electronic data query and retrieval—one of the most basic functions of a
computer. The limitation of “via a manager module within an autonomic
element” within limitation 7 is not a step, but a functional characterization of
the process that performs the recited selecting step, devoid of technological
implementation details or structure. All of these computer functions are
generic, routine, conventional computer activities that are performed only
for their conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call
Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011)
(“Absent a possible narrower construction of the terms ‘processing,’
‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any
general purpose computer without special programming”). None of these
activities are used in some unconventional manner nor do any produce some
unexpected result. Appellant does not contend they invented any of these
activities. In short, each step does no more than require a generic computer
to perform generic computer functions. As to the data operated upon, “even
if a process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
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and analysis other than abstract.” SAP America, Inc. v. InvestPic LLC, 898
F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 21 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-update-
transmission-processing is equally generic and conventional. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction), Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(sequence of data retrieval, analysis, modification, generation, display, and
transmission), Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
We conclude that claim 21 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 21 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
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computer components configured to implement the same idea.
This Court has long “warn[ed] . . . against” interpreting § 101
“in ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From the above determinations we further determine that the claims
do not recite an improvement to the functioning of the computer itself or to
any other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity, as exemplified by the commercial
and legal interaction of business processes by reconfiguring a model with
selected stakeholders options after executing a generic process based on the
model as developed from received and generated data, without significantly
more.
APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from the Non-Final Action 15–17 and
Answer 3–9, and reach similar legal conclusions. We now turn to the Reply
Brief.
We are not persuaded by Appellant’s argument that
the claimed autonomic element is a specialized computing
component that has functionality beyond a general-purpose
computer. Specifically, as discussed in the Appeal Brief, an
autonomic element is a fundamental component of an
autonomic computing system, which is a non-conventional
computing system. The functionality of the claimed manager
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module is clearly defined in Appellant's Specification,
specifically in FIGS. 5 and 6 and the related disclosure (see,
e.g., Specification paragraphs [0033]-[0034]). Furthermore,
Appellant reiterates that the Examiner improperly disregards
the significance of the claimed manager module, which is
indispensable to selecting a process alternative among
alternative options and reconfiguring an instance of a high-
variability executable model based on the selected process
alternative. As previously discussed in the Appeal Brief and as
further discussed herein, these claimed elements require
processing beyond the generic computing implementation
alleged by the Examiner.
Reply Br. 2. As we determine supra, the claimed autonomic element is at
best conceptual advice for automating such functions, as there are no
technological implementation details in the Specification nor in the claims.
Simply to label the bundle of such functions is insufficient to find structural
or technological support for this limitation. Some technological
implementation may be “a specialized computing component that has
functionality beyond a general-purpose computer” (id.), but no such
implementation is recited in the claims or described in the Specification.
At that level of generality, the claims do no more than
describe a desired function or outcome, without providing any
limiting detail that confines the claim to a particular solution
to an identified problem. The purely functional nature of the
claim confirms that it is directed to an abstract idea, not to a
concrete embodiment of that idea.
Affinity Labs, 838 F.3d at 1269.
We are not persuaded by Appellant’s argument that
the claimed steps in the instant case involve execution of
multiple steps via a manager module within an autonomic
element, which as previously discussed is a fundamental
component of an autonomic computing system. More
specifically, the steps involving the claimed manager module
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include selecting a process alternative by analyzing results of
business process execution monitoring and received updated
stakeholder preferences. The steps involving the claimed
manager module further include reconfiguring an executable
model instance based on the selected process alternative by
executing reconfiguration changes.
Reply Br. 3. Again, the manager module within the recited autonomic
element is only a name for a collection of operations described
functionally with no technological implementation detail.
We are not persuaded by Appellant’s argument that
information analysis per the claimed steps of the instant case
results in selection of a process alternative and model
reconfiguration based on the process alternative selection,
which in fact constitutes content that changes character. More
specifically, with respect to model reconfiguration, [c]laim 1
explicitly recites reconfiguration of a high-variability
executable model instance by executing reconfiguration
changes via the claimed manager module. The recitations of
[c]laim 1 clearly include aspects that are more transformative
than mere measurement and information derivation.
Reply Br. 4. Reconfiguring a model is altering an abstraction. No
technological implementation for the model or for the reconfiguration is
recited or described.
We are not persuaded by Appellant’s argument that the claims are
analogous to those in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). Reply Br. 4–5. The claims differ from those found patent
eligible in Enfish, where the claims were “specifically directed to a self-
referential table for a computer database.” 822 F.3d 1327, 1337 (Fed. Cir.
2016). The claims thus were “directed to a specific improvement to the
way computers operate” rather than an abstract idea implemented on a
computer. Id. at 1336. Here, by contrast, the claims are not directed to
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an improvement in the way computers operate. Though the claims
purport to accelerate the process of model parameter selection, our
reviewing court has held that speed and accuracy increases stemming
from the ordinary capabilities of a general purpose computer “do[] not
materially alter the patent eligibility of the claimed subject matter.”
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012). Instead, the claims are more analogous to
those in FairWarning, 839 F.3d 1089, wherein claims reciting “a few
possible rules to analyze audit log data” were found directed an abstract
idea because they asked “the same questions (though perhaps phrased
with different words) that humans in analogous situations detecting fraud
have asked for decades.” 839 F.3d at 1094, 1095.
We are not persuaded by Appellant’s argument that “the claimed
subject matter nevertheless would be patent eligible due to its improvement
to computer technology.” Reply Br. 6. The claims recite functional results
to provide better information, and do not recite technological
implementation details for better computer technology. “The claims are
focused on providing information to traders in a way that helps them process
information more quickly, not on improving computers or technology.”
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019).
Claims 1–7, 11, 12, 18–22, 24, and 27–29 rejected under 35 U.S.C. § 102(b)
as anticipated by Bonabeau
We are persuaded by Appellant’s argument that “Bonabeau does not
teach or suggest anything analogous to planning or executing
reconfiguration changes with respect to an instance of an executable model
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via a manager module within an autonomic element.” App. Br. 18. The
Examiner determines that
the claims that are amended are still very broad in nature, and
merely require some sort of autonomy (i.e. an autonomic
element) in planning reconfiguration changes with respect to
the instance of HVEM. Therefore, Bonabeau has been cited to
teach of at least the breeding of business models and the use of
an evolutionary method of taking highest ranked models and
inputting into a next generation to update the performance
models according to this repetitive loop. Given the broad
nature of the language as claimed, Examiner believes that
Bonabeau does still teach of the limitation
Ans. 13. The Examiner fails to consider the nature of the recited autonomic
element as described in the Specification and construed supra. Although we
do not import limitations from the Specification into the claims, we must
construe the claims in light of the Specification.
Claim 13 rejected under 35 U.S.C. § 103(a) as unpatentable over Bonabeau
and Hintermeister
The arguments supra are equally persuasive here because this is a
dependent claim.
Claim 14 rejected under 35 U.S.C. § 103(a) as unpatentable over Bonabeau
and Talekar
The arguments supra are equally persuasive here because this is a
dependent claim.
CONCLUSIONS OF LAW
The rejection of claims 1–7, 11–14, 18–22, 24, and 27–29 under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more is proper.
The rejection of claims 1–7, 11, 12, 18–22, 24, and 27–29 under
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35 U.S.C. § 102(b) as anticipated by Bonabeau is improper.
The rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable
over Bonabeau and Hintermeister is improper.
The rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable
over Bonabeau and Talekar is improper.
CONCLUSION
The rejection of claims 1–7, 11–14, 18–22, 24, and 27–29 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–7, 11–14, 18–22,
24, 27–29
101 Eligibility 1–7, 11–14,
18–22, 24,
27–29

1–7, 11, 12, 18–22,
24, 27–29
102(b) Bonabeau 1–7, 11, 12,
18–22, 24,
27–29
13 103 Bonabeau,
Hintermeister
13
14 103 Bonabeau
Talekar
14
Overall Outcome 1–7, 11–14,
18–22, 24,
27–29

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED