Thomas Cheng

Patent Trials and Appeals Board

Nov 25, 2019

14526697 - (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.
14/526,697 10/29/2014 Thomas Cheng 024046-300009 3123
98275 7590 11/25/2019
Seyfarth Shaw LLP
2029 Century Park East, Suite 3500
Los Angeles, CA 90067-3063
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):
laxipdocket@seyfarth.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS CHENG
____________

Appeal 2018-009125
Application 14/526,697
Technology Center 3600
____________

BEFORE DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–14, 17, and 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. Appellant identifies the real party in interest as “Novitex
Enterprise Solutions, Inc.” (Appellant’s July 27, 2018 Appeal Brief (Appeal
Br.) 2).
Appeal 2018-009125
Application 14/526,697

2
STATEMENT OF THE CASE
Appellant’s disclosure “relates to auditing the resources of a
computing environment and the re-organization of audited resources in a
computing environment, and more particularly to resource physical position
planning in a computing environment” (Spec.2 ¶ 2). Appellant’s
independent claim 1 is representative and reproduced below:
1. A resource physical positioning planning method
comprising:
establishing a mapping in persistent storage of a
computing system of different computing resources and
corresponding physical locations of a computing environment;
monitoring access requests issued to the different
computing resources by different client computers
communicatively coupled to the computing resources over a
computer communications network disposed within the
computing environment;
computing utilization of each of the computing resources
by the client computing devices so as to determine for a
selected one of the computing resources, one or more of the
client computing devices most often requesting access to the
selected one of the computing resources;
applying by a processor of the computing system a
positioning rule to the selected one of the computing resources
and the one or more of the client computing devices, the
positioning rule specifying an optimal position for a computing
resource based upon a known utilization of the computing
resource by one or more of the client computing devices, the
positioning rule additional specifying that the selected one of
the computing resources is to be replaced with a more rapidly
performing one of the computing resources while requiring a
maximum utilization ratio of the client computing devices to
the selected one of the computing resources and a maximum

2 Appellant’s October 29, 2014 Specification.
Appeal 2018-009125
Application 14/526,697

3
distance permitted between the selected one of the computing
resources and one of the client computing devices determined
to most often access the selected one of the computing
resources; and,
displaying in the computing system an optimal position
for the selected one of the computing resources according to the
positioning rule.
(Appeal Br. 19–20.)

Grounds of rejection before this Panel for review:
Claims 17 and 18 stand rejected under 35 U.S.C. § 112(b).
Claims 9 and 10 stand rejected under 35 U.S.C. § 112(d).
Claims 1, 2, 5–14, 17, and 18 stand rejected under 35 U.S.C. § 101.

Indefiniteness:
ISSUE
Does the evidence support summarily affirming the rejection under
35 U.S.C. § 112(b)?
ANALYSIS
“If a ground of rejection stated by the examiner is not addressed in the
appellant’s brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it, unless the examiner
subsequently withdrew the rejection in the examiner’s answer.” Manual of
Patent Examining Procedure § 1205.02 (Rev. 8.2017, January 2018).
Appellant does not address this rejection, therefore, it is summarily affirmed.
CONCLUSION
The preponderance of evidence supports summarily affirming the
rejection under 35 U.S.C. § 112(b). The rejection of claim 17 under 35
Appeal 2018-009125
Application 14/526,697

4
U.S.C. § 112(b) is affirmed. Claim 18 is not separately argued and falls with
claim 17.

Improper Dependency:
ISSUE
Does the preponderance of evidence support Examiner’s conclusion
that claims 9 and 10 are pending and presented in improper dependent form?
ANALYSIS
Examiner finds:
Although page 12 of Appellant’s submission on 7 August 2017
states that claims 9 and 10 have been canceled, the filed claim
listing, which is controlling in view of 37 C.F.R. [§] 1.121,
indicates that claims 9 and 10 are pending. Examiner further
notes that the Claims Appendix of Appellant’s 21 June 2018
Appeal Brief also lists claims 9 and 10 as “Original”.
Accordingly, Examiner respectfully submits that the rejection
of record is not in error because claims 9 and 10 remain
pending.
(Ans.3 11.) We find no error in Examiner’s rationale. Therefore, we are not
persuaded by Appellant’s contention that “Appellant[] previously canceled
claims 9 and 10 at page 12 of the amendment dated August 7, 2017” (Appeal
Br. 18). Because Appellant does not address Examiner’s finding that
Appellants’ claims 9 and 10 are in improperly dependent form, we are
compelled to affirm Examiner’s rejection of Appellant’s claims 9 and 10.
CONCLUSION
The preponderance of evidence supports Examiner’s conclusion that
claims 9 and 10 are pending and presented in improper dependent form.

3 Examiner’s July 27, 2018 Answer.
Appeal 2018-009125
Application 14/526,697

5
The rejection of claims 9 and 10 under 35 U.S.C. § 112(d) is affirmed

Subject Matter Eligibility:
ISSUE
Does the preponderance of evidence of record support Examiner’s
finding that Appellant’s claimed invention is directed to patent ineligible
subject matter?
PRINCIPLES OF LAW
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
Appeal 2018-009125
Application 14/526,697

6
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)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Gottschalk, 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.”). 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. (citing Gottschalk and Parker); 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.”).
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
Appeal 2018-009125
Application 14/526,697

7
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (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 PTO recently published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (January 7, 2019) (“Revised Guidance”). Under that
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 (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
See Revised Guidance, 84 Fed. Reg. at 54–55. 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 Revised Guidance, 84 Fed. Reg. at 51.

Appeal 2018-009125
Application 14/526,697

8
ANALYSIS
The Revised Guidance instructs us first to determine whether any
judicial exception to patent eligibility is recited in the claim. The Revised
Guidance identifies three judicially-excepted groupings identified by the
courts as abstract ideas: (1) mathematical concepts, (2) certain methods of
organizing human behavior such as fundamental economic practices, and (3)
mental processes.
On this record, Examiner finds that the establishing, monitoring,
computing, applying, and displaying steps of Appellant’s claimed method
“are directed to optimizing resource positioning by analyzing monitored
access requests” (Final Act.4 7). Specifically, Examiner finds that in
Appellant’s claimed method data is collected, the collected data is analyzed
to produce additional data, i.e. utilization and positioning data, which is
displayed (id. at 8). Thus, Examiner reasons that Appellant’s claimed
method steps are analogous “to the abstract concept of ‘collecting
information, analyzing it, and displaying certain results of the collection and
analysis’ . . . identified in . . . [Electric Power Group, LLC v. Alstom SA, 830
F.3d 1350 (Fed. Cir. 2016)]” (id. at 7–8). Therefore, Examiner finds that the
steps set forth in Appellant’s claimed method are, mental processes, an
abstract idea. We agree.
“[A]n invention directed to collection, manipulation, and display of
data was an abstract process.” Intellectual Ventures I LLC v. Capital One
Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017)); see also SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“We have explained

4 Examiner’s August 29, 2017 Final Office Action.
Appeal 2018-009125
Application 14/526,697

9
that claims focused on ‘collecting information, analyzing it, and displaying
certain results of the collection and analysis’ are directed to an abstract
idea”).
Having determined that Appellant’s claim 1 is directed to a judicial
exception, the Revised Guidance directs us to next consider whether the
claims integrate the judicial exception into a practical application. On this
record, Appellant’s claimed system does not integrate the judicial exception
into a practical application. In this case, to determine whether the judicial
exception is integrated into a practical application, we must look at the claim
elements individually and as an ordered combination to determine whether
there are additional elements present which integrate the recited abstract idea
into such an application. In this case, Appellant’s claims require the display
of “an optimal position for the selected one of the computing resources
according to the positioning rule” (see e.g., Appeal Br. 19–20, 21–22, and
23–24). This display function is insignificant extra-solution activity that
merely displays the result of the abstract idea recited in Appellant’s claims
and, therefore, does not integrate the exception into a practical application.
See In re Bilski, 545 F.3d at 963 (en banc), aff’d on other grounds, 561 U.S.
593 (2010). Accord Revised Guidance, 84 Fed. Reg. at 55 (citing MPEP §
2106.05(g)). Stated differently, the display of information does not require
any particular use of the acquired information. See Mayo, 566 U.S. at 79; cf.
Vanda Pharms. Inc. v. West-Ward Pharms. Int’l Ltd., 887 F.3d 1117, 1135
(Fed. Cir. 2018) (The claims at issue in Vanda were not directed to an
abstract idea, under Alice step one, because they involved using the acquired
data to direct a treatment program).
Appeal 2018-009125
Application 14/526,697

10
Having determined that the judicial exception is not integrated into a
practical application, the Revised Guidance requires us to evaluate the
additional elements of Appellant’s claimed invention individually and in
combination to determine whether these additional elements provide an
inventive concept, such as a specific limitation beyond the judicial exception
that is not well-understood, routine, conventional in the field, or simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. See Revised Guidance, 84 Fed. Reg. at 51. “Whether something
is well-understood, routine, and conventional to a skilled artisan at the time
of the patent is a factual determination.” Berkheimer v. HP Inc., 881 F.3d
1360, 1369 (Fed. Cir. 2018).
On this record, Examiner makes clear that “the rejection of record
does not assert that the steps of establishing a mapping, monitoring access,
computing utilization, applying a positioning rule, and displaying an optimal
position are well-understood, routine, and conventional additional
element[]” (Ans. 8; see id. (Examiner asserts that “the rejection of record
makes clear that the establishing, monitoring, computing, applying, and
displaying elements are abstract claim elements”)). To the contrary,
Examiner finds “that programming a general purpose computer to process
instructions is a conventional computing implementation that utilizes a
computer in a well-known and conventional manner” (id.).
We agree with Examiner’s assertion “that it is well-understood,
routine, and conventional to utilize a general purpose computer to execute
program instructions in order to perform the abstract business process of
[Appellant’s independent] claims 1, 7, and 13” (id.). Appellant has not
Appeal 2018-009125
Application 14/526,697

11
provided evidence to the contrary. The application of an abstract idea on a
computer does not integrate abstract ideas into a practical application. Alice,
573 U.S. at 223 (“[M]ere 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.” (citation and internal quotation omitted)).
We also agree with Examiner’s finding that claim limitations
describing the excluded abstract subject matter cannot satisfy the second
step of the Alice analysis (see Ans. 8). See BSG Tech. LLC v. BuySeasons,
Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice
that a claimed invention’s use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.”); Berkheimer, 890 F.3d 1369, 1374 (Fed.
Cir. 2018) (Moore, J., concurring) (“Berkheimer . . . leave[s] untouched the
numerous cases from [the Federal Circuit] which have held claims ineligible
because the only alleged ‘inventive concept’ is the abstract idea.”). As the
SAP court explains,
Because the claims are directed to an abstract idea, we must
proceed to the second stage of the Alice inquiry. We readily
conclude that there is nothing in the claims sufficient to remove
them from the class of subject matter ineligible for patenting
and transform them into an eligible application. What is needed
is an inventive concept in the non-abstract application realm.
(SAP, 898 F.3d at 1168.)
We are not persuaded by Appellant’s contentions regarding “novelty
or non-obviousness” (see Appeal Br. 16). See Mayo, 566 U.S. at 90
(although the § 101 patent-eligibility inquiry and prior art inquiries might
sometimes overlap, “to shift the patent-eligibility inquiry entirely to these
Appeal 2018-009125
Application 14/526,697

12
later sections risks creating significantly greater legal uncertainty, while
assuming that those sections can do work that they are not equipped to do.”);
see also Diehr, 450 U.S. at 188–89 (“[t]he ‘novelty’ of any element or steps
in a process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.”).
CONCLUSION
The preponderance of evidence of record supports Examiner’s finding
that Appellant’s claimed invention is directed to patent ineligible subject
matter. The rejection of claims 1, 5–14, 17, and 18 under 35 U.S.C. § 101 is
affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 2, 5–14, 17, 18 101 Eligibility 1, 2, 5–14,
17, 18

17, 18 112(b) Indefiniteness 17, 18
9, 10 112(d) Improper Dependency 9, 10
Overall
Outcome
1, 2, 5–14,
17, 18

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).

AFFIRMED