Nabil A. Abu El Ata

Patent Trials and Appeals Board

Nov 1, 2019

13362786 - (D) (P.T.A.B. Nov. 1, 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.
13/362,786 01/31/2012 Nabil A. Abu El Ata 3023.1005-001 5038
21005 7590 11/01/2019
HAMILTON, BROOK, SMITH & REYNOLDS, P.C.
530 VIRGINIA ROAD
P.O. BOX 9133
CONCORD, MA 01742-9133
EXAMINER
ROSS, SCOTT M
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
11/01/2019 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.department@hbsr.com
helpdesk@hbsr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte NABIL A. ABU EL ATA

Appeal 2018-006953
Application 13/362,786
Technology Center 3600

Before JOSEPH L. DIXON, JENNIFER L. McKEOWN, and
LINZY T. McCARTNEY, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Nabil A. Abu El Ata,
appeals from the Examiner’s decision to reject claims 1–8 and 10–15. Final
Act. 1. 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(a). Appellant identifies the real party in interest as Nabil A
Abu El Ata, the inventor. App. Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to a predictive deconstruction of dynamic
complexity. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A computer implemented method for evaluating
operation of an information system architecture, comprising:

in a computer processor:

obtaining a multi-layer mathematical model of
architecture of an information system of the enterprise, the
information system architecture supporting the business process
design, layers of the multi-layer model comprising a business
layer, an application layer, and a technology layer, the multi-
layer mathematical model including a definition of changes
undertaken by a plurality of components of the model over time
in response to an indicated input;

modeling performance metrics of the multi-layer model
under a first set of operational parameters, said modeling
including dimensions of cost, quality of service and throughput;

generating a second set of operational parameters, the
second set being distinct from the first set of operational
parameters by one set of variables, the one set of variables
include at least one of: failure of a component of the system
architecture, a delay of an operation, a change in a sequence of
operations, and an alternative mode of operation;

modeling performance metrics of the multi-layer model
under the second set of operational parameters, said modeling
including dimensions of cost, quality of service and throughput;

comparing the performance metrics of the second set of
operational parameters against at least one of the performance
metrics of the first set of operational parameters and a set of
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predetermined thresholds, the predetermined thresholds having
dimensions of cost, quality of service, and throughput;

determining a rate of change over time in the
performance metrics of the second set of operational parameters
relative to the performance metrics of the first set of operational
parameters;

determining whether the rate of change over time
exceeds at least one of the predetermined thresholds;

identifying an adverse event based on an increase in
dynamic complexity of the information system as indicated by
the mathematical model, the increase in dynamic complexity
being determined by an exponential rate of change over time of
at least one of the performance metrics and the determination
whether the rate of change exceeds at least one of the
predetermined thresholds;

reporting the adverse event and characteristics of the
information system architecture under the second set of
operational parameters;

identifying a modification to the multi-layer model, the
modification causing the multi-layer model to avoid the adverse
event under the second set of operational parameters;

updating the multi-layer model to incorporate the
modification; and

modifying the information system of the enterprise based
on the updated multilayer model to provide a modified
information system, the modified information system being
configured to avoid the adverse event under the second set of
operational parameters.
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REJECTION2
Claims 1–8 and 10–15 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to a judicial exception (i.e., a law of nature,
a natural phenomenon, or an abstract idea) without significantly more.
OPINION
35 U.S.C. § 101
With respect to independent claims 1 and 15, Appellant does not set
forth separate arguments for patent eligibility of the claims. Rather,
Appellant relies upon the arguments advanced with respect to independent
claim 1 for each of the separate claim groupings. (Appeal Br. 8–9.)
Therefore, we select independent claim 1 as the illustrative claim for the
group and will address Appellant’s arguments thereto. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2017).
Appellant disagrees with the Examiner’s rejection of claims 1 and 15
and contends that in “Enfish, LLC v. Microsoft Corp.[3], the Federal Circuit
found that inventions implemented in computer systems are not necessarily
directed to an abstract idea, even if directed entirely to software.” (Ans. 8–
9.)
Appellant further contends that “the Federal Circuit held that an
invention is not directed to an abstract idea, and is therefore directed to
patent-eligible subject matter, if the claims are directed ‘to a specific
improvement to the way computers operate.’” (Appeal Br. 9.) Specifically,
Appellant contends that claim 1 recites such a specific improvement of

2 The Examiner has withdrawn the rejections under 35 U.S.C. §§ 103 and
112. (Ans. 3.)
3 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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“modifying the information system of the enterprise based on the updated
multi-layer model.” (Appeal Br. 9.) Appellant argues claim 1 recites a
specific improvement to an information system such as a computer network
and claim 1 also recites that the modification “provide[s] a modified
information system, the modified information system being configured to
avoid the adverse event under the second set of operational parameters,” and
this recitation clarifies that the modified information system is specifically
improved in that it operates to avoid the adverse event. (Appeal Br. 9.)
Additionally, Appellant contends that an illustration of this improvement is
described above with reference to the § 112 rejection. (Appeal Br. 9
(incorporating Appeal Br. 6–8).) Specifically, Appellant contends that
“Appellant’s Fig. 8 depicts an action agent 830 that can take remedial
actions to modify the information system, and Fig. 10 illustrates specific
remedial actions (e.g., redistributing the SQL, decreasing logical I/O
throughput).” (Appeal Br. 9.) Appellant concludes that claim 1 recites a
“specific improvement to the way computers operate,” and, thus, is directed
to patent-eligible subject matter under § 101. (Appeal Br. 9.)
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the Office recently published revised
guidance for evaluating subject matter eligibility under 35 U.S.C. § 101,
specifically with respect to applying the Alice framework. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Office Guidance”). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
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to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253,
1257–58 (Fed. Cir. 2016) (internal citations omitted). Per Office Guidance,
this first inquiry has two prongs of analysis: (i) does the claim recite a
judicial exception (e.g., an abstract idea), and (ii) if so, is the judicial
exception integrated into a practical application. Office Guidance, 84 Fed.
Reg. at 54. Under the Office Guidance, if the judicial exception is integrated
into a practical application, see infra, the claim passes muster under § 101.
Office Guidance, 84 Fed. Reg. at 54–55. If the claim is directed to a judicial
exception (i.e., recites a judicial exception and does not integrate the
exception into a practical application), the next step is to determine whether
any element, or combination of elements, amounts to significantly more than
the judicial exception. Alice, 573 U.S. at 217; Office Guidance, 84 Fed.
Reg. at 56.

Step 2A, Prong One
For the reasons discussed below, we conclude Appellant’s claim 1
recites an abstract idea. Appellant’s claims generally recite a computer
implemented method for evaluating operation of an information system
architecture. This is consistent with how Appellant describes the claimed
embodiment of the invention. (See, e.g., Spec. 6–9, 14–16, 24, 27, 31, 48,
49, 54, 64, Fig. 1; see Appeal Br. 1–2 (Summary of the Claimed Subject
Matter).)
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Consistent with our Office Guidance and case law, we conclude that
a computer implemented method for evaluating operation of an information
system architecture, comprising i) obtaining a multi-layer mathematical
model of architecture of an information system of the enterprise; ii)
modeling performance metrics of the multi-layer model under a first set of
operational parameters; iii) generating a second set of operational
parameters, the second set being distinct from the first set of operational
parameters by one set of variables; iv) modeling performance metrics of the
multi-layer model under the second set of operational parameters; v)
comparing the performance metrics of the second set of operational; vi)
determining a rate of change over time in the performance metrics; vii)
determining whether the rate of change over time exceeds at least one of the
predetermined thresholds; viii) identifying an adverse event; ix) reporting
the adverse event and characteristics; x) identifying a modification to the
multi-layer model; and xi) updating the multi-layer model is a mathematical
concept, recited as such in a claim limitation.4

4 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Apple, 842 F.3d at 1241. Further,
“[a]n abstract idea can generally be described at different levels of
abstraction . . . . The Board’s slight revision of its abstract idea analysis does
not impact the patentability analysis.” Apple, 842 F.3d at 1241. Moreover,
merely combining several abstract ideas does not render the combination
any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327
(Fed. Cir. 2017) (“Adding one abstract idea (math) to another abstract idea
. . . does not render the claim non-abstract.”); see also FairWarning IP, LLC
v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining
the pending claims were directed to a combination of abstract ideas).

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In the Examiner’s Answer, the Examiner maintains that the claims are
directed to using a mathematical models to evaluate operation of an
information system architecture. (Ans. 4–5). The Examiner maintains that
the claimed invention is a “similar to other concepts that have been found
abstract such as Collecting information, analyzing it, and displaying certain
results of the collection and analysis” (Electric Power Group), and
“organizing information through mathematical correlations” (Digitech).5
(Ans. 4.)
The Examiner further maintains that under the broadest reasonable
interpretation, the claims merely modify data and is an abstract idea. The
Examiner further maintains the claims are similar to the patent-ineligible
claims in Digitech because the claims employ mathematical algorithms to
generate additional information and is, thus, an abstract idea. (Ans. 5.)
In Digitech, “[t]he method in the [patent at issue] claims an abstract
idea because it describes a process of organizing information through

See also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir.
2018) (holding that claims to a “series of mathematical calculations based on
selected information” are directed to abstract ideas); Digitech Image Techs.,
LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014)
(holding that claims to a “process of organizing information through
mathematical correlations” are directed to an abstract idea); Bancorp Servs.,
L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1280 (Fed.
Cir. 2012) (identifying the concept of “managing a stable value protected
life insurance policy by performing calculations and manipulating the
results” as an abstract idea).

5 Elec. Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016);
Digitech, 758 F.3d 1344.
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mathematical correlations and is not tied to a specific structure or machine.”
Digitech, 758 F.3d at 1350. Our reviewing court further held in Digitech:
The above claim 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 . . . the two
data sets and the resulting device profile are ineligible subject
matter. Without additional limitations, a process that employs
mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible. “If a
claim is directed essentially to a method of calculating, using a
mathematical formula, even if the solution is for a specific
purpose, the claimed method is nonstatutory.”

Digitech, 758 F.3d at 1351 (quoting Parker v. Flook, 437 U.S. 584, 595
(1978) (internal quotations omitted)).
Moreover, the Federal Circuit holds that claims broadly covering data
collection, communication, and processing are directed to abstract ideas.
See, e.g., Univ. of Fla. Research Found., Inc. v. General Elec. Co., 916 F.3d
1363, 1366–68 (Fed. Cir. 2019); SAP Am., 898 F.3d at 1164–67; Secured
Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 907–08, 910–11
(Fed. Cir. 2017); Credit Acceptance Corp. v. Westlake Servs., 859 F.3d
1044, 1047, 1054–56, 1054 n.6 (Fed. Cir. 2017); RecogniCorp, 855 F.3d
at 1324, 1326–27; Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1339–41 (Fed. Cir. 2017). As the Federal Circuit has
explained, “[a] process that start[s] with data, add[s] an algorithm, and
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end[s] with a new form of data [is] directed to an abstract idea.”
RecogniCorp, 855 F.3d at 1327.
Claim 1 is reproduced below and includes the following claim
limitations that recites a method for evaluating operation of an information
system architecture, emphasized in italics:
1. A computer implemented method for evaluating
operation of an information system architecture, comprising:

in a computer processor:

obtaining a multi-layer mathematical model of
architecture of an information system of the enterprise, the
information system architecture supporting the business process
design, layers of the multi-layer model comprising a business
layer, an application layer, and a technology layer, the multi-
layer mathematical model including a definition of changes
undertaken by a plurality of components of the model over time
in response to an indicated input;

modeling performance metrics of the multi-layer model
under a first set of operational parameters, said modeling
including dimensions of cost, quality of service and throughput;

generating a second set of operational parameters, the
second set being distinct from the first set of operational
parameters by one set of variables, the one set of variables
include at least one of: failure of a component of the system
architecture, a delay of an operation, a change in a sequence of
operations, and an alternative mode of operation;

modeling performance metrics of the multi-layer model
under the second set of operational parameters, said modeling
including dimensions of cost, quality of service and throughput;

comparing the performance metrics of the second set of
operational parameters against at least one of the performance
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metrics of the first set of operational parameters and a set of
predetermined thresholds, the predetermined thresholds having
dimensions of cost, quality of service, and throughput;

determining a rate of change over time in the
performance metrics of the second set of operational
parameters relative to the performance metrics of the first set of
operational parameters;

determining whether the rate of change over time
exceeds at least one of the predetermined thresholds;

identifying an adverse event based on an increase in
dynamic complexity of the information system as indicated by
the mathematical model, the increase in dynamic complexity
being determined by an exponential rate of change over time of
at least one of the performance metrics and the determination
whether the rate of change exceeds at least one of the
predetermined thresholds;

reporting the adverse event and characteristics of the
information system architecture under the second set of
operational parameters;

identifying a modification to the multi-layer model, the
modification causing the multi-layer model to avoid the adverse
event under the second set of operational parameters;

updating the multi-layer model to incorporate the
modification; and

modifying the information system of the enterprise based
on the updated multilayer model to provide a modified
information system, the modified information system being
configured to avoid the adverse event under the second set of
operational parameters.

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More particularly, the method for evaluating operation of an
information system architecture is a mathematical concept and consistent
with our Office Guidance and case law, we conclude that method for
evaluating operation of an information system architecture recites a
mathematical concept and, thus, an abstract idea. See Office Guidance, 84
Fed. Reg. at 52.

Step 2A, Prong Two
Because the claim recites an abstract idea, we next determine whether
the claim integrates the abstract idea into a practical application. Office
Guidance, 84 Fed. Reg. at 54. To determine whether the judicial exception
is integrated into a practical application, we identify whether there are “any
additional elements recited in the claim beyond the judicial exception(s)”
and evaluate those elements to determine whether they integrate the judicial
exception into a recognized practical application. Office Guidance, 84 Fed.
Reg. at 54–55 (emphasis added); see also Manual of Patent Examining
Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h) (9th ed., Rev. 08.2017,
Jan. 2018).
Here, we find the additional limitation of “modifying the information
system of the enterprise based on the updated multilayer model to provide a
modified information system, the modified information system being
configured to avoid the adverse event under the second set of operational
parameters” integrates the judicial exception into a practical application.
More particularly, the claims recite one of (i) an improvement to the
functionality of a computer or other technology or technical field (see MPEP
§ 2106.05(a)); (ii) use a “particular machine” to apply or use the judicial
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exception (see MPEP § 2106.05(b)); (iii) a particular transformation of an
article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other
meaningful limitation (see MPEP § 2106.05(e)). See also Office Guidance,
84 Fed. Reg. at 55.
We find the step of “modifying the information system of the
enterprise based on the updated multilayer model to provide a modified
information system, the modified information system being configured to
avoid the adverse event under the second set of operational parameters” to
apply or use the judicial exception to modify the information system of the
enterprise so that the information system is different after the modification.
(See Appeal Br. 7–8 (citing Spec. 24, 27).)
The step of “modifying the information system of the enterprise based
on the updated multilayer model to provide a modified information system,
the modified information system being configured to avoid the adverse event
under the second set of operational parameters” is more than the type of
extra-solution activities (i.e., in addition to the judicial exception) the courts
have determined insufficient to transform judicially excepted subject matter
into a patent-eligible application. See MPEP § 2106.05(g); see also Bilski v.
Kappos, 561 U.S. 593, 612 (2010) (holding the use of well-known
techniques to establish inputs to the abstract idea as extra-solution activity
that fails to make the underlying concept patent eligible); Elec. Power, 830
F.3d at 1355 (explaining that “selecting information, by content or source,
for collection, analysis, and display does nothing significant to differentiate
a process from ordinary mental processes”); Elec. Power, 830 F.3d at 1354
(recognizing “that merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
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particular tool for presentation), is abstract as an ancillary part of such
collection and analysis”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of
Can., 771 F.Supp.2d 1054, 1065 (E.D. Mo. 2011) aff’d, 687 F.3d 1266 (Fed.
Cir. 2012) (explaining that “storing, retrieving, and providing data . . . are
inconsequential data gathering and insignificant post solution activity”).
Here, Appellant’s claims recite specific limitations (or a combination
of limitations) that are not generic. In addition, we note Appellant describes
“modifying” step of the claimed invention with respect to the “action agent
830” and the components to perform specific examples of self-healing
functions and performs more than generic functions. (See, e.g., Spec. 24–28,
Fig. 10; Spec. 28:18–22 (“[P]roposed actions may be directed to rerouting
traffic through the network, modifying priority to network access points, or
reconfiguring network routers in other ways. Fig. 10 is a chart 1000
illustrating content of an exemplary case, as well as mechanisms of
identifying, acting upon and updating the case.”).)
Here, like the claims at issue in DDR Holdings, Appellant’s claims
address a specific problem arising in the realm of computer networks (i.e.,
“modifying the information system of the enterprise based on the updated
multilayer model to provide a modified information system, the modified
information system being configured to avoid the adverse event under the
second set of operational parameters,” and they improve an existing
technological process. See DDR Holdings, 773 F.3d at 1258–59; see also
Enfish, 822 F.3d at 1335–36 (distinguishing between claims wherein the
focus of the claims is on an improvement in computer capabilities and those
that invoke a computer as a tool).
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For at least the foregoing reasons, the claims integrate the judicial
exception into a practical application by modifying the information system
of the enterprise. From the corresponding disclosure in the Specification the
modification is more than just merely manipulation of data in an abstraction.

Step 2B
Because we found the claims recite additional limitations that
integrate the abstract idea and mathematical concepts into a practical
application, we do not address the claimed invention under Step 2B.
For the reasons discussed supra, we are persuaded of Examiner error.
Accordingly, we reverse the Examiner’s patent eligibility rejection of
independent claim 1 under 35 U.S.C. § 101 and its dependent claims 2–8
and 10–14. Because independent claim 15 contains similar claim language,
we also reverse the Examiner’s patent eligibility rejection of independent
claim 15.
DECISION
We reverse the Examiner’s patent eligibility rejection of claims 1–8
and 10–15.

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DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–8, 10–15 101 1–8, 10–15
Overall
outcome
1–8, 10–15

REVERSED