Michael R. Haley et al.

Patent Trials and Appeals Board

Nov 25, 2019

11425850 - (D) (P.T.A.B. Nov. 25, 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.
11/425,850 06/22/2006 MICHAEL R. HALEY BOC920060032US1
(END008)
9909
73479 7590 11/25/2019
Shutts & Bowen LLP
Steven M. Greenberg, Esq.
525 Okeechobee Blvd
# 1100
West Palm Beach, FL 33401
EXAMINER
BROCKINGTON III, WILLIAM S
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
11/25/2019 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@crgolaw.com
patents@shutts.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL R. HALEY and DINESH C. VERMA
____________

Appeal 2018-006762
Application 11/425,850
Technology Center 3600
____________

Before BIBHU R. MOHANTY, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–12 and 21–28. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Br. 2.
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THE INVENTION
The Appellant’s claimed invention is related to a converged tool for
information technology (IT) that models infrastructure performance, quality
of experience (QOE), and financial metrics in an interdependent fashion
(Spec., para 8, lines 1–3). Claim 1, reproduced below, is representative of
the subject matter on appeal.

1. A method for analyzing an information technology
architecture comprising:
instantiating an information technology infrastructure
simulation tool in memory of a computing device;
rendering a user interface for the information technology
infrastructure simulation tool in a display of the computing device;
identifying a configuration in the user interface for an
information technology infrastructure;
specifying in the user interface at least one service provided to
a population of subscribers through the information technology
infrastructure;
setting through the user interface values for each of a
performance model, a quality of experience (QoE) model and a
finance model based upon the information technology infrastructure;
setting through the user interface an initial workload so that an
overloaded state of more than one hundred percent utilization is
experienced by at least one of the subscribers;
simulating the configuration and in response to the simulation,
computing by the computing device performance metrics for the
infrastructure based upon the performance model, the initial workload
and the overloaded state, determining by the computing device QoE
metrics for subscribers receiving the at least one service via the
infrastructure based in part upon the QoE model and the computed
performance metrics, calculating by the computing device a return on
investment (ROI) value for based upon the finance model for the
overloaded state and determining a blocking probability for the
overloaded state and re-computing a subscriber population based
upon the blocking probability; and,
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on condition that the configuration is determined to be stable in
that the configuration satisfies each of the performance model, the
QoE model and the finance model, displaying in the display an
indication of stability for the configuration, but on condition that the
configuration is determined to be unstable, reducing the workload
based upon the re-computed subscriber population, establishing a
new infrastructure state and re-performing the simulation.

THE REJECTION
The following rejection is before us for review:
Claims 1–12 and 21–28 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (App. Br. 14–20; Reply Br. 2–4).
The Appellant argues further that the claim is “significantly more” than the
alleged abstract idea (App. Br. 19–22; Reply Br. 5–12).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 9–13, 17–23; Ans. 4–13).

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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We agree with the Examiner. 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. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice,
573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 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, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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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 187; 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. (internal citation omitted) (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 to a known structure or process may well be deserving
of patent protection.”).
The PTO 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 activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] 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
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designed to monopolize the judicial exception.” (see Guidance,
84 Fed. Reg. at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then 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 Guidance.
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 (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. (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.
The Specification at paragraph 8 states that the claimed invention is
related to a converged tool for information technology (IT) that models
infrastructure performance, quality of experience (QOE), and financial
metrics in an interdependent fashion (Spec., para 8, lines 1–3). Here, the
Examiner has determined that the claimed analyzing of an information
technology architecture sets forth the modeling of network activity by
applying business rules and constraints and which is an abstract concept
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(Final Act. 17). We substantially agree with the Examiner. We determine
that the claim sets forth the concept in italics in the claim above. Here, the
claim describes the concept of generating a performance model for an
information technology system, computing results for a simulation of the
performance model, and based on the results of the performed system
simulation including the return on investment (ROI) based on a finance
model, making a determination about the system which is a certain method
of organizing human activities and a fundament economic practice, i.e., a
judicial exception. Here, the claim describes using mathematical modeling
to mitigate risk in finding a stable system for the business model. “[A]
process that employs mathematical algorithms to manipulate existing
information to generate additional information is not patent eligible.” See
Digitech Image Techs, LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014). Thus, we consider the claim to recite the judicial exception
identified above.
We next determine whether the claim recites additional elements in
the claim to integrate the judicial exception into a practical application. See
Guidance, 84 Fed. Reg. at 54–55. The Revised Guidance references the
MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c)
and (e)–(h).
Here the claims do not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a physical
transformation. Rather, we determine that nothing in the claims imposes a
meaningful limit on the judicial exception, such that the claims are more
than a drafting effort to monopolize the judicial exception.
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For example, in claim 1 the steps of [1] “identifying a configuration in
the user interface for an information technology infrastructure”; [2]
“specifying in the user interface at least one service provided to a population
of subscribers”; [3] “setting through the user interface values for each of a
performance model, a quality of experience (QoE) model and a finance
model based upon the information technology infrastructure”; [4] “setting
through the user interface an initial workload so that an overloaded state of
more than one hundred percent utilization is experienced by at least one of
the subscribers”; [5] simulating the configuration and in response to the
simulation, computing by the computing device performance metrics for the
infrastructure”; [6] “calculating by the computing device a return on
investment (ROI) value for based upon the finance model for the overloaded
state and determining a blocking probability for the overloaded state and re-
computing a subscriber population based upon the blocking probability”; [7]
“on condition that the configuration is determined to be stable”; and [8]
“displaying in the display an indication of stability for the configuration, but
on condition that the configuration is determined to be unstable, reducing the
workload based upon the re-computed subscriber population, establishing a
new infrastructure state and re-performing the simulation are merely steps
performed by a generic computer that do not improve computer
functionality. That is, these recited steps [1]–[8] “do not purport to improve
the functioning of the computer itself” but are merely generic functions
performed by a conventional processor. Likewise, these same steps [1]–[8]
listed above do not improve the technology of the technical field and merely
use generic computer components and functions to perform the steps. Also,
the recited method steps [1]–[8] above do not require a “particular machine”
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and can be utilized with a general purpose computer, and the steps
performed are purely conventional. In this case the general purpose
computer is merely an object on which the method operates in a
conventional manner. Further, the claim as a whole fails to effect any
particular transformation of an article to a different state. The recited steps
[1]–[8] fail to provide meaningful limitations to limit the judicial exception
and rather are mere instructions to apply the method to a generic computer.
Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application as set forth in the
Revised Guidance which references the MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
The claim fails to add a specific limitation beyond the judicial exception that
is not well-understood, routine, and conventional in the field. Rather the
claim uses well-understood, routine, and conventional activities previously
known in the art and they are recited at a high level of generality. The
Specification at paragraph 17 for example describes using conventional
computer components such as routers, switches, and communication links.
The claim specifically includes recitations for a “computing device”
implement the method but the computer components are all used in a
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manner that is well-understood, routine, and conventional in the field. The
Appellant has not shown these claimed generic computer components which
are used to implement the claimed method are not well understood, routine,
or conventional in the field. Here, the Appellant’s arguments and citations
have not shown that the claim to be “significantly more” than the abstract
idea.
The Appellant in the Appeal Brief at page 15 has also cited to Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show that the
claim is not abstract but the claims in that case were not similar in scope to
those here in contrast directed to a self-referential data table.
The Appellant in the Reply Brief at page 15 has also cited to McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) but
the claims in that case are distinguished from this case in being directed to
rules for lip sync and facial expression animation.
For these above reasons the rejection of claim 1 is sustained. The
Appellant has provided the same arguments for the remaining claims which
are drawn to similar subject matter and the rejection of these claims is
sustained for the same reasons given above.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1–12 and 21–28 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–12, 21–28 101 Non-statutory 1–12, 21–
28

TIME PERIOD FOR RESPONSE
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).

AFFIRMED