Sabrina Sellers et al.

Patent Trials and Appeals Board

Oct 13, 2020

12576369 - (D) (P.T.A.B. Oct. 13, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/576,369 10/09/2009 Sabrina Sellers DC-15117 1979
160816 7590 10/13/2020
Terrile, Cannatti & Chambers, LLP - Dell
P.O. Box 203518
Austin, TX 78720
EXAMINER
BOYCE, ANDRE D
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
10/13/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTO@dockettrak.com
tmunoz@tcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SABRINA SELLERS and TRISHA COLLIER
____________

Appeal 2019-005835
Application 12/576,3691
Technology Center 3600
____________

Before PHILIP J. HOFFMANN, KENNETH G. SCHOPFER, and
SHEILA F. McSHANE, Administrative Patent Judges.

McSHANE, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeal from the Examiner’s
decision to reject claims 1, 3–7, 9–13, and 15–18. We have jurisdiction
under 35 U.S.C. § 6(b).
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 Dell Products L.P.
Appeal Br. 1.
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BACKGROUND
The invention relates to information handling systems and, more
specifically, to a usage based process for selecting hardware and software in
a build-to-order environment. Specification, hereafter “Spec.,” Abstract,
¶ 1. The usage based process presents a survey to a customer and uses
information derived from the survey, including preferred configuration, to
automatically populate an information handling system configuration. Id.
¶ 4.
Representative method claim 1 is reproduced from page 5 of the
Appeal Brief (Claims App.) as follows:
1. A system for enabling configuration of an information
handling system comprising:
a configurator, the configurator configuring a system
with options selected according to user input;
a survey module, the survey module enabling obtaining
information from a user and identifying a preferred
configuration based upon the information from the user;
an automatic population module, the automatic
population module automatically populating an information
handling system configuration based upon the preferred
configuration;
a database, the database receiving information from and
supplying information to the configurator, the survey module
and the automatic population module;
an installation system, the installation system fabricating
an information handling system corresponding to the
information handling system configuration, the information
handling system comprising a plurality of hardware
components; and wherein
the automatically populating the information handling
system configuration further comprises performing a
configuration accuracy analysis on the information handling
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system configuration to assure that the information handling
system configuration provides a completed and accurately
configured information handling system;
the information from the user comprises information
regarding potential usage of system, types of applications to be
used or documents that will be manipulated by the system, an
ecosystem in which the system will reside and whether the
system will be coupled to a network and if so the type of
network; and
the information regarding the ecosystem in which the
system will reside further includes information relating to
technology ownership, electronic devices to which the system
will be coupled and whether the system will be part of a home
network.
The Examiner rejects claims 1, 3–5, 7, 9–11, 13, and 15–17 under 35
U.S.C. § 101 as directed to non-statutory subject matter. Final Action,
hereafter “Final Act.,” 2–7, mailed September 28, 2018; Answer, hereafter
“Ans.,” 3, mailed May 30, 2019.
DISCUSSION
35 U.S.C. § 101
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the 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,
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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 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) (“Diehr”)); “tanning, dyeing,
making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at
182 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.”), see also, 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.”).
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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 and quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].”’ Id. (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 USPTO has guidance on the application of 35 U.S.C. § 101, in
accordance with judicial precedent. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (“2019 Guidance”).
Under 2019 Guidance, a claim is “directed to” an abstract idea if the claim
recites any of (1) mathematical concepts, (2) certain methods of organizing
human activity, and (3) mental processes—without integrating such abstract
idea into a “practical application,” i.e., without “apply[ing], rely[ing] on, or
us[ing] 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.” Id. at 52–55. A claim so
“directed to” an abstract idea constitutes ineligible subject matter, unless it
recites an additional element (or combination of elements) amounting to
significantly more than the abstract idea. Id. at 56.
With this context in mind, we evaluate the Examiner’s rejection of
representative claim 1. The Examiner finds that claim 1 is “directed to the
abstract idea of enabling configuration of an information handling system,”
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that includes “configuration of an information handling system, including
configuring, obtaining, populating, receiving, fabricating and performing
steps.” Final Act. 3; Ans. 3–4. The Examiner finds the claim is similar to
those where the Federal Circuit found the claim was directed to an abstract
idea, such as concepts involving organizing activity. Final Act. 4 (citing
Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344
(Fed. Cir. 2014); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir.
2014)). The Examiner also finds that the claim “limitations of configuring,
obtaining, populating, receiving, fabricating and performing, are a process
that . . . covers performance of the limitations in the mind, but for the
recitation of generic computer components.” Ans. 4. The Examiner finds
that “other than reciting a computer system and a plurality of modules, of
modules, nothing in the claim elements preclude the steps from practically
being performed in the mind.” Id. at 5.
As first raised in the Reply Brief, Appellant contends that the claimed
element of “fabricating an information handling system corresponding to the
information handling system configuration” could not be performed merely
by a mental process because the fabrication of the information handling
system, which comprises hardware components, “is a physical process that
could not be performed merely by a mental process.” Reply Brief, hereafter
“Reply Br.,” 2–3, mailed July 29, 2019. Appellant refers to a Merriam-
Webster dictionary2, and asserts that it defines “fabricate” as to “construct
from diverse and usually standardized parts” and as to “make by combining

2 Appellant does not identify the edition of the Merriam-Webster dictionary
that is referenced. See Reply Br. 2–3.
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or arranging parts,” which could not be accomplished by a mental process.
Id. at 3.
The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.”’ Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). The analysis asks whether the focus of the
claim is either on a specific improvement in relevant technology or on a
process that itself qualifies as an “abstract idea” for which computers are
invoked merely as a tool. See id. at 1335–36.
We do not find Appellant’s argument persuasive. First, the Examiner
points to a portion of the Specification, which states:
The software modules discussed herein may include script,
batch, or other executable files. The software modules may be
stored on a machine-readable or computer-readable storage
medium such as a disk drive. Storage devices used for storing
software modules in accordance with an embodiment of the
invention may be magnetic floppy disks, hard disks, or optical
discs such as CD-ROMs or CD-Rs, for example. A storage
device used for storing firmware or hardware modules in
accordance with an embodiment of the invention may also
include a semiconductor-based memory, which may be
permanently, removably or remotely coupled to a
microprocessor/memory system. Thus, the modules may be
stored within a computer system memory to configure the
computer system to perform the functions of the module.
Ans. 6–7 (quoting Spec. ¶ 32) (emphasis added). The Specification states
that hardware modules may be stored, with the hardware module configuring
the computer system to perform the functions of the hardware module.
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Thus, the Specification discloses that hardware modules of the information
handling system are stored in the system, which would reasonably be
considered “fabrication” under an interpretation that the term means
“constructing” or “making by combining.” Consistent with the Examiner’s
findings, the Specification does not indicate or suggest that the storage of
hardware modules is anything other than the conventional installation of
generic computer components. Thus, we determine that the Examiner’s
findings that the elements of the claims perform steps capable of being
performed in the mind, except for generic computer-implemented steps, is
supported by the record.
Second, even if we were to interpret that the “installation system”
element, which fabricates an information handling system with hardware
components, to include physical processes, whether something claimed is
physical is not the test for determining whether claimed subject matter is
judicially-excepted from patent-eligibility. Were that the case, claims to
computers necessarily would be patent eligible. See Alice, 573 U.S. at 224
(explaining that a computer’s existence in the physical rather than
conceptual realm is not relevant to the analysis); Solutran, Inc. v. Elavon,
Inc., 931 F.3d 1161, 1168 (Fed. Cir. 2019). Here, Appellant does not argue
that any physical fabrication of hardware components represents an advance
or anything other than a conventionally-known act. Without more, the mere
potential physical nature of some claim elements is not enough to save the
claims from a finding of abstractness. See In re Marco Guldenaar Holding
B.V., 911 F.3d 1157, 1161 (Fed. Cir. 2018) (“the abstract idea exception
does not turn solely on whether the claimed invention comprises physical
versus mental steps”).
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Finally, we find no error with the Examiner’s findings in a Non-Final
Rejection that the inventive concept and abstract idea of the claim is directed
to the configuration of the information handling system, and the fabrication
is merely a post-solution activity. Non-Final Act. 10, mailed March 21,
2018. As the Examiner finds, and we concur, “the actual assembly of
components of the information handling system is not Applicant’s invention,
nor is it described in the specification with any specificity (i.e. how the
fabrication is specifically done).” Id.
Appellant also asserts that the claims do not fall within one of the
groups of abstract ideas identified in the 2019 Guidance. Appeal Br. 3–4;
“Reply Br.,” 1–2. Appellant argues that “it is respectfully submitted that the
claims do not per se (i.e., by themselves) claim any of the groupings of
abstract ideas enumerated in Section I of the revised guidelines,” and then
lists the claimed steps. Reply Br. 2.
We consider the Examiner’s finding that the elements performing the
steps of the claims may be performed by mental processes, except for
generic computer-implemented steps. See Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the
exception of generic computer-implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper.”). The Specification describes the invention
as:
. . . a usage based process for selecting hardware and software
in a build to order environment is set forth. More specifically,
during the configuration of an information handling system, the
usage based process presents a survey to a customer and uses
information derived from the survey to automatically populate
an information handling system configuration. In certain
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embodiments, the process of auto-populating the information
handling system configuration includes a configuration accuracy
analysis to assure that the various components identified for the
auto-population provide a completed and accurately configured
information handling system.
Spec. ¶ 4. In accordance with the description, the claim limitations include a
survey module for obtaining information from a user and identifying a
preferred configuration based upon that information, a configurator for
configuring a system according to options selected by user input, populating
the information handling system based on the preferred configuration, and
performing a configuration accuracy analysis to assure that the configuration
provides a completed and accurately configured information handling
system. We find no error with the Examiner’s finding that these steps could
reasonably be performed by a human as mental processes. See Ans. 4–5. As
discussed above, the installation system element performing fabrication is a
post-solution activity and is extraneous to the abstract idea of enabling the
configuration of an information handling system. Further, the additional
elements of the claim, that is, a database that receives and supplies
information to the configurator, the survey module, and the automatic
population module, as well as an installation system, discussed above, which
fabricates an information handling system comprising a plurality of
hardware components, are recitals of the generic computer components of a
computer system and a plurality of modules, which are consistent with the
Examiner’s findings that the other claim recitals recite only a generic
computer system components and their use. See id. at 5.
The next issue under the second prong of step 2A is whether
additional elements in representative claim 1 integrate the judicial exception
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into a practical application, such as elements reflecting an improvement in
the functioning of a computer or an improvement to other technology or
technical field.3
Appellant contends that the claims are directed to a practical
application which is enabling configuration of an information handling
system. Appeal Br. 4. We are not persuaded of error by the Examiner on
the issue of whether the additional elements in representative claim 1
integrate the judicial exception into a practical application. The Examiner
finds, and we agree, that when considered either individually or as an
ordered combination, the steps of representative claim 1 do not include
improvements to a technology or technical field. Final Act. 4; Ans. 5–7.
We agree with the Examiner that the use of the computer system and
modules (and the enablement of their configuration) in the steps of the claim
are recited at a high level of generality, absent the imposition of any
meaningful limits on the practice of the abstract idea. See Ans. 5.
As a result, we conclude that representative claim 1 does not recite
additional elements that integrate the judicial exception into a practical
application, and we find no reversible error with the Examiner’s findings
that representative claim 1 recites an abstract idea.
Turning to the second step of the Alice inquiry, we now look to
whether representative claim 1 contains any inventive concept or adds
anything significantly more to transform the abstract concept into a patent-
eligible application. Alice, 573 U.S. at 216.

3 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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The Federal Circuit has held that, after determining that the claim is
directed to an ineligible concept, we assess “whether the claim limitations,
other than the invention’s use of the ineligible concept to which it was
directed, were well-understood, routine, and conventional.” BSG Tech LLC
v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (emphasis added).
We find no error with the Examiner’s finding that the claim does not recite
more that the implementation of the abstract idea by generic computer
components and functions. Final Act. 5. Appellant does not assert that there
is any unconventional use of a computer, and the use of generic computer
components to perform generic steps to implement an abstract idea has
repeatedly been found to not make an abstract idea patent eligible. See
Alice, 573 U.S. at 217–218 (Instructing one to “apply” an abstract idea and
reciting no more than generic computer elements performing generic
computer tasks does not make an abstract idea patent eligible.).
Accordingly, we are not persuaded of error in the Examiner’s
conclusion that representative claim 1 is directed to patent-ineligible subject
matter.
CONCLUSION
For the above reasons, the Examiner’s 35 U.S.C § 101 rejection of
claims 1, 3–7, 9–13, and 15–18 is affirmed.
DECISION SUMMARY
In summary:
Claims Rejected 35 U.S.C.
§
Affirmed Reversed
1, 3–7, 9–13, 15–18 101 1, 3–7, 9–13, 15–18

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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