SAP SE

Patent Trials and Appeals Board

Jul 6, 2021

2020005614 (P.T.A.B. Jul. 6, 2021)

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.
15/383,133 12/19/2016 Volodymyr Vasyutynskyy 2058.B41US1 3430
50400 7590 07/06/2021
SCHWEGMAN LUNDBERG & WOESSNER/SAP
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
LOFTIS, JOHNNA RONEE
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
07/06/2021 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):
SLW@blackhillsip.com
uspto@slwip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VOLODYMYR VASYUTYNSKYY

Appeal 2020-005614
Application 15/383,133
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision rejecting claims 1–5, 7–13, and 15–19. 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. The Appellant identifies the real party in interest as SAP
SE. Appeal Br. 2.
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Application 15/383,133

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ILLUSTRATIVE CLAIM
1. A computerized method for efficiently storing cost
data and determining a product cost, the method comprising:
receiving, by a first extractor, a first data source
describing changes in the product cost over time;
generating, by the first extractor, a first price trend model
indicative of the product cost over time, the first price trend
model comprising an indication of a model type of the first
price trend model and an indication of at least one model
coefficient of the first price trend model;
storing the first price trend model at a price trend model
repository of a database;
receiving, by a second extractor, a second data source
describing changes in the product cost over time;
generating, by the second extractor, a second price trend
model indicative of the product cost over time, the second price
trend model comprising an indication of a model type of the
second price trend model and an indication of at least one
model coefficient of the second price trend model;
storing the second price trend model at the price trend
model repository;
obtaining a cost structure for a product from the database,
the cost structure describing one or more items affecting a cost
of the product;
selecting the first price trend model from the price trend
model repository;
obtaining the first price trend model from the price trend
model repository of the database;
computing, using a hardware processor, an item cost for
each of the one or more items of the cost structure using the
first price trend model; and
computing, using the hardware processor, a cost of the
product based on the item costs.
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REJECTION
Claims 1–5, 7–13, and 15–19 are rejected under 35 U.S.C. § 101 as
ineligible subject matter.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Under 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. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted 35 U.S.C. § 101 to exclude laws of nature, natural
phenomena, and abstract ideas, because they are regarded as the basic tools
of scientific and technological work, such that including them within the
domain of patent protection would risk inhibiting future innovation premised
upon them. Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013).
Of course, “[a]t some level, ‘all inventions . . . embody, use, reflect,
rest upon, or apply’” these basic tools of scientific and technological work.
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). Accordingly,
evaluating ineligible subject matter, under these judicial exclusions, involves
a two-step framework for “distinguish[ing] between patents that claim the
buildin[g] block[s] of human ingenuity and those that integrate the building
blocks into something more, thereby transform[ing] them into a patent-
eligible invention.” Id. (alterations in original) (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 88–89 (2012) (internal
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citation and quotation marks omitted)). The first step determines whether
the claim is directed to judicially excluded subject matter (such as a so-
called “abstract idea”); the second step determines whether there are any
“additional elements” recited in the claim that (either individually or as an
“ordered combination”) amount to “significantly more” than the identified
judicially excepted subject matter itself. Id. at 217–18.
In 2019, the USPTO published revised guidance on the application of
§ 101, in accordance with judicial precedent. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 Under the 2019 Revised Guidance, a claim is
“directed to” an abstract idea, only 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. The considerations
articulated in MPEP § 2106.05(a)–(c) and (e)–(h) bear upon whether a claim
element (or combination of elements) integrates an abstract idea into a
practical application. Id. at 55 (referring to MPEP 9th ed. Rev. 08.2017, rev.
Jan. 2018). A claim that is “directed to” an abstract idea constitutes

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf). The Manual of Patent Examining
Procedure (“MPEP”) incorporates the revised guidance and subsequent
updates at § 2106 (9th ed. Rev. 10.2019, rev. June 2020).
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ineligible subject matter, unless the claim recites an additional element (or
combination of elements) amounting to significantly more than the abstract
idea. Id. at 56.
Although created “[i]n accordance with judicial precedent,” the 2019
Revised Guidance enumerates the analytical steps differently than the
Supreme Court’s Alice opinion. 2019 Revised Guidance, 84 Fed. Reg. at 52.
Step 1 of the 2019 Revised Guidance addresses whether the claimed subject
matter falls within any of the statutory categories of 35 U.S.C. § 101. Id.
at 53–54. Step 2A, Prong One, concerns whether the claim at issue recites
ineligible subject matter; if an abstract idea is recited, Step 2A, Prong Two,
addresses whether the recited abstract idea is integrated into a practical
application. Id. at 54–55. Unless such integration exists, the analysis
proceeds to Step 2B, in order to determine whether any additional element
(or combination of elements) amounts to significantly more than the
identified abstract idea, which would render a claim patent-eligible, even
though it is directed to judicially excepted subject matter. Id. at 56.
The Appellant argues all claims as a group, using independent claim 1
as exemplary. See Appeal Br. 8–14. Per 37 C.F.R. § 41.37(c)(1)(iv), we
select claim 1 for analysis herein.
With regard to Step 1 of the 2019 Revised Guidance, the Examiner
does not dispute that claim 1 belongs to an eligible category of invention,
under § 101. Final Act. 3.
As to Step 2A, Prong One, the Examiner determines that claim 1
recites “certain methods of organizing human activity, a type of abstract
idea.” Final Act. 3–4. “More specifically,” the Examiner continues,
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the steps of receiving data describing changes in the product
cost over time; generating a first and second price trend model;
storing the first and second price trend models; obtaining a cost
structure; obtaining a price trend model; computing an item cost
and computing a cost of the product based on item costs is a
process that, under its broadest reasonable interpretation, covers
concepts relating to business relations as the cost information
may be used for making production planning decisions, etc.
Id. at 4.
Disputing claim 1’s categorization as such a “certain method[ ] of
organizing human activity” (Final Act. 3–4), the Appellant points out that
reports generated by the claims involved in SRI Int’l, Inc. v. Cisco Systems,
Inc., 918 F.3d 1368 (Fed. Cir. 2019), may likewise “be used for making
planning decisions, and even conceivably production planning decisions.”
Appeal Br. 10. Because the Federal Circuit, in SRI, determined that the
claims in that case are patent-eligible, the same must be true for the claims in
the present Appeal. Id.
This argument is unpersuasive, because it misapplies the reasoning of
SRI. The critical determination in SRI is that those claims were not directed
to a judicial exception, because the claims employed “a specific technique
— using a plurality of network monitors that analyze specific types of data
on the network and integrating reports from the monitors — to solve a
technological problem arising in computer networks: identifying hackers or
potential intruders into the network.” SRI, 918 F.3d at 1375. In other words,
the Federal Circuit did not base its decision, in SRI, on any bare
determination that claim language includes judicial exception. Rather, SRI
looked to the types of issues that the 2019 Revised Guidance addresses in
Step 2A, Prong Two, to which we now turn.
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According to Step 2A, Prong Two, unless a claim that recites a
judicial exception (such as an abstract idea) “integrates the recited judicial
exception into a practical application of that exception,” the claim is
“directed to” the judicial exception. 2019 Revised Guidance, 84 Fed. Reg.
at 53. The analysis of such an “integration into a practical application”
involves “[i]dentifying . . . any additional elements recited in the claim
beyond the judicial exception(s)” and “evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application.” Id. at 54–55. Among the
considerations “indicative that an additional element (or combination of
elements) may have integrated the exception into a practical application” is
whether “[a]n additional element reflects an improvement in the functioning
of a computer, or an improvement to other technology or technical field.”
Id. at 55 (footnote omitted). “[W]hether an additional element or
combination of elements integrate[s] the exception into a practical
application should be evaluated on the claim as a whole.” Id. at 55 n.24.
The Appellant raises matters relating to Step 2A, Prong Two,
asserting that the claims accomplish a “technical solution to a technical
problem” (Appeal Br. 9), “solv[e] a particular technology problem arising
from computer technology” (id. at 11–12), and achieve a “practical
application” (id. at 12–13), based upon a purported reduction in computer
memory resources. The Appellant attributes the purported improvement to
the claimed use of “extractor[s]” to receive “data source[s],” in order to
generate “price trend model[s],” which are used to “comput[e]” item and
product “cost[s].” See id.
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As an initial matter, the Appellant does not identify “additional
elements” (see 2019 Revised Guidance, 84 Fed. Reg. at 54–55) — i.e., claim
limitations that are not included within the identified judicial exception — as
allegedly accomplishing the proposed technological improvement.
Moreover, as the Examiner explains, the Appellant’s proposed
improvement amounts to “storing a price trend model in place of historical
price data”; thus, “[a]ny improvement to the memory footprint is based on
storing less data” — that is, “[t]he computer is not improved.” Answer 3.
Indeed, the Specification points out that “[c]onventionally, cost
estimates are generated from databases of historical price information.”
Spec. ¶ 2. By contrast, in the disclosed approach, as reflected in claim 1,
“price trend model[s]” are created, based upon data in external sources —
such as an ERP (enterprise resource planning) system, a website, or a third-
party service provider — via “extractors.” Id. ¶¶ 22–28. The “price trend
model[s]” are then used to predict product pricing. Hence, the proposed
improvement:
Since each price trend model may be characterized by just a
few parameters, the memory footprint for the price trend model
remains relatively small (in comparison, for example, to a
memory footprint that contains the entire history of prices for
an item).
Id. ¶ 29.
Rather than accomplishing a more efficient technique for storing the
same information, these features of claim 1 simply “stor[e] less data,” as the
Examiner explains. Answer 3.
Therefore, we are not persuaded of error, in regard to the Appellant’s
arguments corresponding to Step 2A, Prong Two.
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Proceeding to Step 2B of the 2019 Revised Guidance, 84 Fed. Reg.
at 56, a claim that recites a judicial exception (such as an abstract idea)
might, nevertheless, be patent-eligible, if the claim contains “additional
elements amount[ing] to significantly more than the exception itself” — i.e.,
“a specific limitation or combination of limitations that [is] not well-
understood, routine, conventional activity in the field, which is indicative
that an inventive concept may be present.” See Alice, 573 U.S. at 223
(“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.”)
Although the Appellant employs terminology associated with Step 2B
— e.g., the proposed “unconventional arrangement” of elements (Appeal Br.
11) and the accomplishment of “an inventive concept that is substantially
more than the abstract idea” (id. at 13) — the Appellant’s related arguments,
in the Appeal Brief, assert the same position addressed above (regarding
Step 2A, Prong Two). That is, the Appellant again argues that “claim 1
recites a specific arrangement for finding the cost of a product using a
hardware processor in a manner that minimizes the usage of memory
resources.” Id. See also id. at 11 (“[C]laim 1 recites an unconventional
arrangement utilizing extractors and price trend models in the recited
manner to generate a product cost in a way that minimizes memory usage.”)
As addressed above, these arguments do not persuade us of Examiner error.
Accordingly, per 37 C.F.R. § 41.37(c)(1)(iv), we sustain the rejection
of claim 1 and claims 2–5, 7–13, and 15–19 under 35 U.S.C. § 101.
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–13,
15–19
101 Eligibility 1–5, 7–13,
15–19

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