Vernon Rory. Jones et al.

Patent Trials and Appeals Board

Oct 15, 2019

13226292 - (D) (P.T.A.B. Oct. 15, 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.
13/226,292 09/06/2011 Vernon Rory Jones NEIP-01000US0 3358
28554 7590 10/15/2019
Vierra Magen Marcus LLP
2001 Junipero Serra Blvd., Suite 515
Daly City, CA 94014
EXAMINER
CHEN, GEORGE YUNG CHIEH
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
10/15/2019 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):
patents@vierramagen.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VERNON RORY JONES and STEPHEN LOUIS MALLOY

Appeal 2017-011837
Application 13/226,292
Technology Center 3600

Before ROBERT E. NAPPI, LARRY J. HUME, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Vernon Rory Jones et al.,
appeals from the Examiner’s decision rejecting claims 1–3, 5–7, 10, 17,
and 18. Claims 1–21 are pending, but claims 4, 8, 9, 11–16, and 19–21 have
been withdrawn from consideration in response to a restriction requirement,
and thus are not before us on Appeal. Non-Final Act. 2. 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 New
Energy Investment Partners LLC. App. Br. 3.
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STATEMENT OF THE CASE2
The Invention
The claims are directed to systems and methods to generate facility
reconfiguration plans that can be used to reconfigure energy systems of
facilities to achieve financial objectives. Spec., Title. In particular,
Appellant’s disclosed embodiments and claimed invention “generally relate
to systems and methods that develop plans to alter the design/configuration
of energy related systems, known as ‘energy systems,’ at a facility.” Spec.
¶ 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (formatting added; emphasis added to contested prior-art limitations):
1. A computer implemented method for generating a
facility reconfiguration plan (FRP) that can be used to
reconfigure an energy system of a facility to achieve a financial
objective, the method comprising:
(a) an energy model (EM) module implemented using at
least one hardware processor obtaining, via a user interface
and/or one or more databases, information about the energy
system of the facility and in dependence thereon generating a
characterization of the energy system of the facility and
associated economics prior to any modifications;
(b) an economic optimization model (EOM) module
implemented using the at least one hardware processor
receiving, from the EM module, the characterization of the
energy system of the facility and associated economics prior to

2 Our decision relies upon Appellant’s Appeal Brief (“App. Br.,” filed
Apr. 21, 2017); Reply Brief (“Reply Br.,” filed Sept. 27, 2017); Examiner’s
Answer (“Ans.,” mailed July 27, 2017); Non-Final Office Action (“Non-
Final Act.,” mailed Sept. 23, 2016); and the original Specification (“Spec.,”
filed Sept. 6, 2011).
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any modifications, and the EOM module determining or
otherwise obtaining information regarding a plurality of
potential modifications to the energy system of the facility;
(c) the EM module and EOM module utilizing the
characterization of the energy system of the facility and
associated economics to determine which one of the potential
modifications, if any, is to be added to the FRP by,
(c.1) determining, for each potential modification,
whether the potential modification provides a financial
benefit that can be used to achieve the financial
objective;
(c.2) determining a financial attractiveness
corresponding to each potential modification that
provides a financial benefit that can be used to achieve
the financial objective; and
(c.3) identifying, as the potential modification to
be added to the FRP, the potential modification having a
greatest financial attractiveness;
(d) the EM module and EOM module generating the
FRP by repeating step (c) a plurality of times, wherein during
each subsequent iteration of step (c) that follows an initial
iteration of step (c), every potential modification that was
identified as providing a greatest financial attractiveness
during a previous iteration of step (c), and thereby has already
been added to the FRP, is accounted for as if the potential
modification were implemented and is removed from being a
candidate for consideration as a potential modification to be
added to the FRP during the subsequent iteration; and
publishing the FRP;
wherein steps (a), (b), (c) and (d) are performed by a
computer system or subsystem that includes the at least one
hardware processor, and wherein the publishing the FRP
comprises one or more of displaying the FRP on a display
device of the computer system, producing a printout of the FRP
and/or passing the FRP to another computer system or
subsystem.
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Matsubara et al.
(“Matsubara”)
US 2005/0096797 A1 May 5, 2005
Hakim et al.
(“Hakim”)
US 2008/0114499 A1 May 15, 2008
Francino et al.
(“Francino”)
US 2012/0010758 A1 Jan. 12, 2012
Rejections on Appeal
R1. Claims 1–3, 5–7, 10, 17, and 18 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Non-Final Act. 2.
R2. Claims 1–3, 7, 10, 17, and 18 stand rejected under pre–AIA 35
U.S.C. § 103(a) as being unpatentable over the combination of Matsubara
and Francino. Non-Final Act. 4.
R3. Claims 5 and 6 stand rejected under pre–AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Matsubara,
Francino, and Hakim. Non-Final Act. 10.
CLAIM GROUPING
Based on Appellant’s arguments (App. Br. 19–26) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible
subject matter Rejection R1 of claims 1–3, 5–7, 10, 17, and 18 on the basis
of representative claim 1; and we decide the appeal of obviousness Rejection
R2 of claims 1–3, 7, 10, 17, and 18 on the basis of representative claim 1.
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Remaining claims 5 and 6 in Rejection R3, not argued separately,
stand or fall with the respective independent claim from which they depend.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv); In re Hyatt,
211 F.3d 1367, 1373 (Fed. Cir. 2000) (determining an argument not first
raised in the brief to the Board is waived on appeal).
We disagree with Appellant’s arguments with respect to claims 1–3,
5–7, 10, 17, and 18 and, unless otherwise noted, we incorporate by reference
herein and adopt as our own: (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken, and (2) the reasons
and rebuttals set forth in the Examiner’s Answer in response to Appellant’s
arguments. We highlight and address specific findings and arguments
regarding claim 1 for emphasis as follows.

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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1. § 101 Rejection R1 of Claims 1–3, 5–7, 10, 17, and 18
Issue 1
Appellant argues (App. Br. 19–26; Reply Br. 5–7) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent ineligible under
§ 101?
Principles of Law
A. 35 U.S.C. § 101
“Eligibility under 35 U.S.C. § 101 is a question of law, based on
underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166
(Fed. Cir. 2018).
An invention is patent eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.4
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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).

4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). 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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “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 (1853)));
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 “[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
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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. (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.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
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.
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B. USPTO Revised Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised 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);5 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).6
See Revised Guidance 52–53.
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

5 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
6 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
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(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.7
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Revised Guidance 52 (footnotes omitted).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent

7 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.8
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified “practical application” sections of the MPEP,9
cited in the Revised Guidance under Step 2A(ii), are:

8 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
9 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though a judicial
exception is recited in a separate claim element.10 The Federal Circuit has
held claims eligible at the second step of the Alice/Mayo test (USPTO Step
2B) because the additional elements recited in the claims provided
“significantly more” than the recited judicial exception (e.g., because the

10 See, e.g., Diehr, 450 U.S. at 187.
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additional elements were unconventional in combination).11 Therefore, if a
claim has been determined to be directed to a judicial exception under
Revised Step 2A, we must also evaluate the additional elements individually
and in combination under Step 2B to determine whether they provide an
inventive concept (i.e., whether the additional elements amount to
significantly more than the exception itself).12
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
Section III.B.13

11 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); Bascom Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
12 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
13 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum. For more information concerning evaluation of well-
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In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or

understood, routine, conventional activity, see MPEP § 2106.05(d), as
modified by the USPTO Berkheimer Memorandum (USPTO Commissioner
for Patents Memorandum dated Apr. 19, 2018, “Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter “Berkheimer
Memo”).
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(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be
present.
Revised Guidance, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
Analysis
Step 1 – Statutory Category
Claim 1, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined “[t]he claimed invention is directed to a
judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract
idea) without significantly more. Claims 1-24 are directed to abstract idea of
generating [a] facility reconfiguration plan (FRP).” Non-Final Act. 3.
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We conclude claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 1 recites an abstract idea based upon the Revised Guidance.
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification describes that
“[e]mbodiments of the present invention generally relate to systems and
methods that develop plans to alter the design/configuration of energy
related systems, known as ‘energy systems,’ at a facility.” Spec. ¶ 1.
Appellant’s Abstract describes the invention as:
Provided herein are systems, methods and computer
programs for generating a facility reconfiguration plan (FRP)
that can be used to reconfigure an energy system of a facility to
achieve a financial objective. The energy system of the facility
and associated economics prior to any modifications are
characterized. Additionally, there is a determination of which
one of a plurality of potential modifications, if any, is to be
added to the FRP by determining which one of the potential
modifications provides a financial benefit, that can be used to
achieve the financial objective, and has a greatest financial
attractiveness. The FRP is generated by repeating the
aforementioned determination a plurality of times, wherein
during each iteration that follows an initial iteration, every
potential modification that was identified as providing a
greatest financial attractiveness during a previous iteration is
removed from consideration. The above described process can
be repeated for a plurality of different fuel price schemes,
which results in a separate FRP being generated for each fuel
price scheme, with each FRP having a corresponding total
financial value.
Spec. 87 (Abstract).
Appellant argues the “claimed embodiments improve the use of a
computer system by using the computer system to produce a FRP in a
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manner the [sic] efficiently uses the computer[’]s limited computational
resources.” App. Br. 21. Appellant further argues, “using the claimed
invention, the total number of possible combinations of potential
modifications that need to be calculated can be reduced by over one million
combinations, i.e., from 1,048,576 possible combinations of modifications
down to a mere 210 possible combinations of modifications. Even fewer
combinations may be considered if step (d) terminates earlier.” App. Br. 22.
Further in this regard, Appellant contends “in Enfish, as in the present
case, the claimed invention allows a computer to operate on data in a manner
that is faster using less of its resources (which in Enfish, was less storage).”
App. Br. 24.
We are not persuaded by Appellant’s argument because the purported
computer-related efficiencies are not reflected in the claims. Moreover, in
Enfish, our reviewing court held claims directed to a self-referential logical
model for a computer database patent eligible under step one of Alice.
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1330 (Fed. Cir. 2016). The
disclosed technique enabled faster searching and more effective storage of
data than previous methods. Id. at 1333. The court found the claims
directed to “a specific improvement to the way computers operate, embodied
in the self-referential table” (id. at 1336), and explained that the claims are
“not simply directed to any form of storing tabular data, but instead are
specifically directed to a self-referential table for a computer database” that
functions differently than conventional databases. Id. at 1337.
Thus, we do not find the claims on Appeal to be sufficiently
analogous to those held patent eligible in Enfish.
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Appellant also relies upon the Federal Circuit’s holding in McRO.
“The Federal Circuit found in [McRO], as should be found in this case, that a
claimed process that ‘uses a combined order of specific rules that renders
information into a specific format that is then used and applied to create
desired results’ is directed to patent eligible subject matter under the first
part of the Alice inquiry.” App. Br. 24 (citing McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)).
We note the claims in McRO recited a “specific . . . improvement in
computer animation” using “unconventional rules that relate[d]
sub-sequences of phonemes, timings, and morph weight sets.” McRO,
837 F.3d at 1302–03, 1307–08, 1314–15. In McRO, “the incorporation of
the claimed rules, not the use of the computer,” improved an existing
technological process. Id. at 1314.
Other than attorney argument alleging that computer efficiency is
improved, Appellant does not, however, identify how the invention recited
in claim 1 improves an existing technological process. See Alice, 573 U.S.
at 223 (explaining that “the claims in Diehr were patent eligible because
they improved an existing technological process”). Rather, claim 1 concerns
a “computer implemented method for generating a facility reconfiguration
plan (FRP) that can be used to reconfigure an energy system of a facility to
achieve a financial objective.” Claim 1. In addition, Appellant has not
demonstrated that the claimed determining and identifying in step (c), i.e.,
steps (c.1) through (c.3), or the iteration of these steps in step (d), correspond
to unconventional rules.
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Appellant further argues, “preemption is clearly not a concern, as
there are numerous alternative techniques that can be performed to
reconfigure an energy system of a facility, e.g., as taught, for example, in
reference applied in the 103 rejection.” App. Br. 24.14
Regarding preemption, “[w]hile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility. . . . Where a patent’s claims are deemed only
to disclose patent ineligible subject matter under the Mayo framework, as
they are in this case, preemption concerns are fully addressed and made
moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362–63 (Fed. Cir. 2015) (“that the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract”).
In TABLE 1 below, we identify in italics the specific claim
limitations that we conclude recite an abstract idea. We additionally identify

14 In response to Appellant’s apparent suggestion that references in a prior
art rejection teach an alternative, we note the Supreme Court emphasizes,
“[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.” Diehr, 450 U.S. at 188–89 (emphasis added). Our reviewing court
further guides that “[e]ligibility and novelty are separate inquiries.” Two-
Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340
(Fed. Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838
F.3d 1253, 1263 (Fed. Cir. 2016) (holding that “[e]ven assuming” that a
particular claimed feature was novel does not “avoid the problem of
abstractness”).
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in bold the additional (non-abstract) claim limitations that are generic
computer components and techniques:
TABLE 1
Independent Claim 1 Revised Guidance
A computer implemented
method for generating a facility
reconfiguration plan (FRP) that
can be used to reconfigure an
energy system of a facility to
achieve a financial objective, the
method comprising:
A process (method) is a statutory
subject matter class. See 35 U.S.C.
§ 101.
(a) an energy model (EM)
module implemented using at
least one hardware processor
obtaining, via a user interface
and/or one or more databases,
information about the energy
system of the facility and in
dependence thereon
generating a characterization of
the energy system of the facility
and associated economics prior to
any modifications;
Receiving or obtaining information,
i.e., data gathering, is insignificant
extra-solution activity. Revised
Guidance 55, n.31; see also MPEP
§ 2106.05(g).
Cf. Trading Tech. Int’l, Inc. v. CQG,
INC., 675 F. App’x. 1001, 1004 (Fed
Cir. 2017) (“The claims require a
specific, structured graphical user
interface paired with a prescribed
functionality directly related to the
graphical user interface’s structure
that is addressed to and resolves a
specifically identified problem in the
prior state of the art.”).
Generating a characterization is an
abstract idea, i.e., “an observation,
evaluation judgment, opinion” which
could be performed alternatively as a
mental process. See Revised
Guidance 52.
(b) an economic optimization
model (EOM) module
implemented using the at least
Receiving or obtaining information,
i.e., data gathering, is insignificant
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Independent Claim 1 Revised Guidance
one hardware processor
receiving, from the EM module,
the characterization of the energy
system of the facility and
associated economics prior to
any modifications, and the EOM
module determining or otherwise
obtaining information regarding a
plurality of potential
modifications to the energy
system of the facility;
extra-solution activity. Revised
Guidance 55, n.31.
Making a determination is an abstract
idea, i.e., “an observation, evaluation
judgment, opinion” which could be
performed alternatively as a mental
process. See Revised Guidance 52.
(c) the EM module and EOM
module utilizing the
characterization of the energy
system of the facility and
associated economics to
determine which one of the
potential modifications, if any, is
to be added to the FRP by,
Using information to make a
determination is an abstract idea, i.e.,
“an observation, evaluation
judgment, opinion” which could be
performed alternatively as a mental
process.” See Revised Guidance 52.
(c.1) determining, for each
potential modification, whether
the potential modification
provides a financial benefit that
can be used to achieve the
financial objective;
Making a determination is an abstract
idea, i.e., “an observation, evaluation
judgment, opinion” which could be
performed alternatively as a mental
process.” See Revised Guidance 52.
(c.2) determining a financial
attractiveness corresponding to
each potential modification that
provides a financial benefit that
can be used to achieve the
financial objective; and
Making a determination is an abstract
idea, i.e., “an observation, evaluation
judgment, opinion” which could be
performed alternatively as a mental
process.” See Revised Guidance 52.
(c.3) identifying, as the potential
modification to be added to the
FRP, the potential modification
having a greatest financial
attractiveness;
Making a determination is an abstract
idea, i.e., “an observation, evaluation
judgment, opinion” which could be
performed alternatively as a mental
process.” See Revised Guidance 52.
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Independent Claim 1 Revised Guidance
(d) the EM module and EOM
module generating the FRP by
repeating step (c) a plurality of
times,
wherein during each subsequent
iteration of step (c) that follows
an initial iteration of step (c),
every potential modification that
was identified as providing a
greatest financial attractiveness
during a previous iteration of step
(c), and thereby has already been
added to the FRP, is accounted
for as if the potential
modification were implemented
and is removed from being a
candidate for consideration as a
potential modification to be
added to the FRP during the
subsequent iteration; and
Accounting for every potential
modification is an abstract idea, i.e.,
“an observation, evaluation
judgment, opinion” that could be
performed alternatively as a mental
process.” See Revised Guidance 52.
publishing the FRP; Transmitting or outputting
information is insignificant post-
solution activity. Revised Guidance
55, n.31.
wherein steps (a), (b), (c) and
(d) are performed by a
computer system or subsystem
that includes the at least one
hardware processor, and
Generic computer components.
wherein the publishing the FRP
comprises one or more of
displaying the FRP on a display
device of the computer system,
producing a printout of the FRP
and/or
Transmitting or outputting
information for display is
insignificant post-solution activity.
Revised Guidance 55, n.31; see also
MPEP § 2106.05(g); and see
buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014)
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Independent Claim 1 Revised Guidance
passing the FRP to another
computer system or subsystem.
(determining a claim reciting a
computer that receives and sends
information over a network is
directed to an abstract idea);
Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d
1332, 1340 (Fed. Cir. 2017) (holding
that displaying data is an abstract
idea).
Claims App’x.
We determine that claim 1, as a whole, recites mental processes that
may also be performed by pen and paper. This type of activity, i.e.,
generating a facility reconfiguration plan, as reflected in the totality of
limitations (a) through (d), for example, includes longstanding conduct that
existed well before the advent of computers and the Internet, and could be
carried out by a human with pen and paper. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental
processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalk v. Benson.”).15

15 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.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. 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.
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Thus, under Step 2A(i), we agree with the Examiner that claim 1’s
“method for generating a facility reconfiguration plan (FRP) that can be used
to reconfigure an energy system of a facility to achieve a financial objective”
is a judicial exception. We conclude claim 1, under our Revised Guidance,
recites a judicial exception of mental processes, i.e., a generating a facility
reconfiguration plan, and thus an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “practical application” Step 2A(ii) in
which we determine whether the recited judicial exception is integrated into
a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.
Appellant asserts:
[T]he claimed invention provides for efficient use [of] the
computational resources of a computer system, and thus,
improves the operation of a computer system. This
distinguishes Appellant’s claimed embodiments from those in
Alice . . . where the Court found that there was no improvement
to the operation of a computer. Further, Appellant asserts that
the claimed embodiments, because they provide for efficient
use the computational resources of a computer system and
improve the operation of a computer system, are in line with the
claims in Research Corp. Technologies v. Microsoft Corp. . . .
where the claims directed to a computer implemented printing

Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
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process producing higher quality halftone images while using
less processing power and memory space was held to be
patent[-]eligible subject matter.
App. Br. 23 (citing Research Corp. Technologies, Inc. v. Microsoft Corp.,
627 F.3d 859 (Fed. Cir. 2010)).
We disagree with Appellant’s arguments alleging the relevance of the
Federal Circuit’s holding in Research Corp. In that case, the court held:
The invention presents functional and palpable applications in
the field of computer technology. These inventions address “a
need in the art for a method of and apparatus for the halftone
rendering of gray scale images in which a digital data processor
is utilized in a simple and precise manner to accomplish the
halftone rendering.” . . . . The fact that some claims in the ’310
and ’228 patents require a “high contrast film,” “a film printer,”
“a memory,” and “printer and display devices” also confirm this
court's holding that the invention is not abstract. Indeed, this
court notes that inventions with specific applications or
improvements to technologies in the marketplace are not likely
to be so abstract that they override the statutory language and
framework of the Patent Act.
This court also observes that the claimed methods incorporate
algorithms and formulas that control the masks and halftoning.
These algorithms and formulas, even though admittedly a
significant part of the claimed combination, do not bring this
invention even close to abstractness that would override the
statutory categories and context.
Research Corp., 627 F.3d at 868–9 (internal citations omitted).
Contrary to Appellant’s arguments, and different from the court’s
holding in Research Corp., we conclude none of the claim limitations in
claim 1 clearly address a need in the field of computer technology.
As to the specific limitations, we find the portions of limitations (a)
and (b) identified in TABLE 1 above recite insignificant data gathering. See
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MPEP § 2106.05(g). Data gathering, as performed by the steps or function
in Appellant’s claims, is a classic example of insignificant extra-solution
activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc),
aff’d sub nom, Bilski v. Kappas, 561 U.S. 593 (2010).
We also determine the “publishing the FRP” step in claim 1 recites
insignificant post-solution activity. The Supreme Court guides that the
“prohibition against patenting abstract ideas ‘cannot be circumvented’ [by]
adding ‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–11
(quoting Diehr, 450 U.S. at 191–92).
We find each of the limitations of claim 1 recite either abstract ideas
or extra-solution activity as identified in TABLE 1 in Step 2A(i), supra, and
none of the limitations integrate the judicial exception into a practical
application as determined under one or more of the MPEP sections cited
above. The claim as a whole merely uses instructions to implement the
abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea.
Under analogous circumstances, the Federal Circuit has held that
“[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that
[such] data . . . was previously collected, analyzed, manipulated, and
displayed manually, and it simply proposes doing so with a computer. We
have held such claims are directed to abstract ideas.” Univ. of Fla. Research
Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019); see
also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
2016) (“Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available information in a
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particular field, stating those functions in general terms, without limiting
them to technical means for performing the functions that are arguably an
advance over conventional computer and network technology.”).
Therefore, on this record, Appellant has not shown an improvement to
computer technology or practical application under the guidance of MPEP
section 2106.05(a) (“Improvements to the Functioning of a Computer or to
Any Other Technology or Technical Field”) or section 2106.05(e) (“Other
Meaningful Limitations”). Nor does Appellant advance any arguments in
the Brief(s) that are directed to the Bilski machine-or-transformation test,
which would only be applicable to method (process) claims 17 and 18 on
appeal. See MPEP §§ 2106.05(b) (Particular Machine) and 2106.05(c)
(Particular Transformation).
Accordingly, we conclude the judicial exception is not integrated into
a practical application, and thus the claim is directed to the judicial
exception.
Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs,
838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract idea into
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patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any “additional
features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be
more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea16; mere instructions to implement an
abstract idea on a computer17; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.18
Evaluating representative claim 1 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea
into a patent-eligible application of that abstract idea.
The patent-eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a
claim element or combination of elements is well-understood, routine and

16 Alice, 573 U.S. at 221–23.
17 Alice, 573 U.S. at 222–23.
18 Alice, 573 U.S. at 225 (explaining using a computer to obtain data, adjust
account balances, and issue automated instructions involves computer
functions that are well-understood, routine, conventional activities).
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conventional to a skilled artisan in the relevant field is a question of fact.”
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the recited “EM module,”
“EOM module,” “user interface, and “computer system or subsystem that
includes the at least one hardware processor” in method claim 1; and
similarly in independent claims 17 and 18, the Specification discloses:
The user interface 201 can include, e.g., a display, a
keypad, a touch screen, mechanical buttons, one or more
peripheral pointing devices (e.g., a mouse, touchpad, joystick,
trackball, etc.), and/or the like. The user interface can include a
graphical user interface (GUI) to facilitate interaction with a
user, administrator and/or manager. Alternative types of user
interfaces may also be used . . . . Such information can be
accessed and displayed, e.g., using a mobile device, a desktop
computer, a netbook, a laptop computer, a smart phone, an
energy display device, a tablet computer, and/or similar
devices. The user interface 201 may allow information to be
entered or selected, e.g., using a mechanical or touch key pad,
one or more drop-down or pop-up menus, a list box, and/or
similar mechanisms. Where a key pad is used, freeform text
may be entered where appropriate.
Spec. ¶ 69. The Specification further describes:
The subject matter described herein may be embodied in
systems, apparatus, methods, and/or articles depending on the
desired configuration. In particular, various implementations of
the subject matter described herein may be realized in computer
software, firmware or hardware and/or combinations thereof, as
well as in digital electronic circuitry, integrated circuitry, and
the like. These various implementations may include
implementation in one or more computer programs that are
executable and/or interpretable on a programmable system
including at least one programmable processor, which may be
special or general purpose, coupled to receive data and
instructions from, and to transmit data and instructions to, a
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storage system, at least one input device, and at least one output
device.
Spec. ¶ 237. See also Spec. ¶¶ 238–242 for additional evidence
demonstrating the generic nature of the recited elements.
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellant’s
Specification, as quoted above.19
With respect to this step of the analysis, Appellant argues, “the claims
also recite significantly more than an abstract idea, so as to qualify as patent-
eligible subject matter under the second prong of the Alice test . . . . because
they enable a computer to generate an FRP (that can be used to reconfigure
an energy system of a facility) in a computationally efficient manner, and
more specifically, in a manner that utilizes the computational resources of a
computer system in an efficient manner.” App. Br. 25.
In response, we conclude the claim does not actually operate to
reconfigure an energy system, but instead only creates a plan or summary of
energy efficient items, i.e., the method carries out an abstract idea using a
computer.
The Manual of Patent Examining Procedure, based upon our
precedential guidance, provides additional considerations with respect to

19 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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analysis of the well-understood, routine, and conventional nature of the
claimed computer-related components.
Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether
the additional elements amount to more than a recitation of the
words “apply it” (or an equivalent) or are more than mere
instructions to implement an abstract idea or other exception on
a computer. As explained by the Supreme Court, in order to
transform a judicial exception into a patent-eligible application,
the additional element or combination of elements must do
“‘more than simply stat[e] the [judicial exception] while adding
the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. __,
134 S. Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example,
claims that amount to nothing more than an instruction to apply
the abstract idea using a generic computer do not render an
abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110
USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at
1984 (warning against a § 101 analysis that turns on “the
draftsman’s art”) . . . .
In Alice Corp., the claim recited the concept of
intermediated settlement as performed by a generic computer.
The Court found that the recitation of the computer in the claim
amounted to mere instructions to apply the abstract idea on a
generic computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984.
The Supreme Court also discussed this concept in an earlier
case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673,
676 (1972), where the claim recited a process for converting
binary-coded decimal (BCD) numerals into pure binary
numbers. The Court found that the claimed process had no
substantial practical application except in connection with a
computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The
claim simply stated a judicial exception (e.g., law of nature or
abstract idea) while effectively adding words that “apply it” in a
computer. Id.
MPEP § 2106.05(f) (“Mere Instructions To Apply An Exception”).
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With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a “computer implemented method for generating a facility
reconfiguration plan (FRP) that can be used to reconfigure an energy system
of a facility to achieve a financial objective” that includes an “EM module
and EOM module” and “computer system or subsystem that includes the at
least one hardware processor” (claim 1) as argued by Appellant is simply not
enough to transform the patent-ineligible abstract idea here into a patent-
eligible invention under Step 2B. See Alice, 573 U.S. at 221 (“[C]laims,
which merely require generic computer implementation, fail to transform
[an] abstract idea into a patent-eligible invention.”).
We conclude the claims fail the Step 2B analysis because claim 1, in
essence, merely recites various computer-based elements along with no
more than mere instructions to implement the identified abstract idea using
the computer-based elements.
Therefore, in light of the foregoing, we conclude, under the Revised
Guidance, that Appellant’s claim 1, considered as a whole, is directed to a
patent-ineligible abstract idea that is not integrated into a practical
application and does not include an inventive concept. Accordingly, we
sustain the Examiner’s § 101 rejection of independent claim 1, and grouped
claims 2, 3, 5–7, 10, 17, and 18 which fall therewith. See Claim Grouping,
supra.
2. § 103(a) Rejection R2 of Claims 1–3, 5–7, 10, 17, and 18
Issue 2
Appellant argues (App. Br. 14–17; Reply Br. 2–4) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
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combination of Matsubara and Francino is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] computer implemented method for generating a facility
reconfiguration plan (FRP) that can be used to reconfigure an energy system
of a facility to achieve a financial objective,” that includes, inter alia, the
limitation of:
(d) the EM module and EOM module generating the FRP by
repeating step (c) a plurality of times, wherein during each
subsequent iteration of step (c) that follows an initial iteration
of step (c), every potential modification that was identified as
providing a greatest financial attractiveness during a previous
iteration of step (c), and thereby has already been added to the
FRP, is accounted for as if the potential modification were
implemented and is removed from being a candidate for
consideration as a potential modification to be added to the FRP
during the subsequent iteration,
as recited in claim 1?
Analysis
Appellant states, “[a]s indicated, e.g., in withdrawn claim 8, step (c)
can be repeated until no remaining potential modifications provides a
financial benefit that can be used to achieve the financial objective, or until
every potential modification has already been included in the FRP. This
provides for a computationally efficient way of generating a facility
reconfiguration plan (FRP).” App. Br, 15. Appellant further argues,
Appellant does not dispute that Francino utilizes an
iterative process to hone in on optimal operational parameters
of a plant. Further, Appellant does not dispute that Francino,
during each new iteration, may utilize “anew or refined set of
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constraints or equipment configuration information.” However,
Francino does not ever teach or suggest that “every potential
modification that was identified as providing a greatest
financial attractiveness during a previous iteration of step (c),
and thereby has already been added to the FRP, is accounted/or
as if the potential modification were implemented and is
removed from being a candidate for consideration as a
potential modification to be added to the FRP during the
subsequent iteration, as required by claim 1. Rather, Francino
appears to use its iterative process to hone in on ranges,
numbers or variables used by the numerical problem solver,
e.g., by using ranges, numbers or variables produced during one
iteration as the starting ( or to select the starting) ranges,
numbers or variables for the next iteration.
Id. at 16.
The Examiner cites to Francino, in paragraph 98, as teaching or
suggesting contested limitation (d) of claim 1, i.e.:
(d) . . . generating the FRP by repeating step (c) a
plurality of times, wherein during each subsequent iteration of
step (c) that follows an initial iteration of step (c), every
potential modification that was identified as providing a
greatest financial attractiveness during a previous iteration of
step (c), and thereby has already been added to the FRP, is
accounted for as if the potential modification were implemented
and is removed from being a candidate for consideration as a
potential modification to be added to the FRP during the
subsequent iteration
Claims App’x.
Francino discloses, in pertinent part:
One advantageous method of integrating the use of both
an expert engine and a numerical solver as part of an
optimization system is to configure the expert engine to call the
numerical solver in an iterative manner (i.e., one or more times)
so as to enable the expert engine to hone in on an optimal
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solution by steering the numerical solver to identify an optimal
solution over one or more runs of the numerical solver. In this
case, the expert engine may call the numerical solver multiple
times by providing the numerical solver with a first set of
general constraints or equipment configuration information, by
running the numerical solver to optimize the system based on
those general constraints or equipment configurations, and
then use the results of the numerical solver to determine anew
or refined set of constraints or equipment configuration
information. The expert engine may then call the numerical
solver a second time providing the numerical solver with a
refined set of constraints or equipment configuration
parameters so as to obtain a more refined optimization based
on the refined set of inputs provided to the numerical solver.
The expert engine may then use the output of the numerical
solver to develop a still further set of equipment constraints,
etc. and call the numerical solver again. The expert engine can
repeat this process for as many times as needed to develop an
optimal solution for the plant. When implementing this iterative
procedure, the expert engine may develop and deliver different
general equipment configurations based on different
configuration methodologies (i.e., those that are significantly
different in their operational approach) in each of the separate
calls to the numerical solver to determine which general
configuration methodology may be optimal. This type of
iterative call is useful when the numerical solver cannot easily,
or in real time, run through all of the different possible sets of
configurations of plant equipment to determine a global optimal
setting. Thus, in this case, the expert system limits the scope of
considerations made by the numerical solver to reduce the
workload on the numerical solver.
Francino ¶ 98 (emphasis added).
The Examiner explains the cited portion of Francino by finding
the expert engine call the numerical solver in an iterative
manner to enable expert engine to hone in on an optimal
solution by steering the solver to identify an optimal solution
over runs of solver. The engine may call [the] solver by
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providing a first set of general constraints or equipment
configuration information, by running the solver to optimize the
system, and then use the results of the numerical solver to
determine anew or refined set of equipment configuration
information. The engine then call the solver a second time
providing the solver with a refined set of equipment
configuration parameter so as to obtain a more refined
optimization.
Non-Final Act. 7–8. The Examiner provides additional clarification in the
Answer by finding “[i]n this case, Francino uses [an] iterative approach to
perform optimization; when performing such optimization, result from the
first run of solver (potential modification) is fed into the solver again (as if
potential modification were implemented and removed from being a
candidate) to produce a more refined result” (Ans. 2), and “when the result is
fed back to the solver, the modification would be treated as if it were
implemented; and when the goal of feeding back the result is to narrow
down on a range, it would mean that the previous obtained result were
removed from consideration since the solver is attempting to narrow the
range down further to a sub-range. Therefore, Francino discloses the
limitation.” Ans. 2–3.
We agree with the Examiner’s finding above that Francino teaches or
at least suggests the contested limitation of claim 1. We agree with the
Examiner because the test for obviousness is what the combined teachings of
the prior art would have suggested to the hypothetical person of ordinary
skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant has
not challenged the combinability of the teachings of Matsubara and
Francino.
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We also are in agreement with the Examiner because, under the
broadest reasonable interpretation standard,20 we find Francino, at least in
paragraph 98, teaches or suggests using the results of the numerical solver to
determine a refined set of constraints or equipment configuration
information in which the expert engine may call the numerical solver a
second time by providing the numerical solver with a refined set of
constraints or equipment configuration parameters so as to obtain a more
refined optimization based on the refined set of inputs provided to the
numerical solver. We find this teaches or at least suggests accounting for a
modification as if it were implemented and is subsequently removed from
being a candidate of a future modification.
We conclude the claim requires an iterative process that, under the
broadest reasonable interpretation, the combination of Matsubara and
Francino renders obvious. We further note Appellant has not demonstrated
that the Examiner’s proffered combination of references would have been
“uniquely challenging or difficult for one of ordinary skill in the art.” See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418). Although Appellant has not
specifically alleged the Examiner relied upon improper hindsight, Appellant

20 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” Morris, 127 F.3d at 1054.
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has not provided objective evidence of secondary considerations which our
reviewing court guides “operates as a beneficial check on hindsight.”
Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352
(Fed. Cir. 2013).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 1, nor do we
find error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1, and grouped claims 2, 3, 7, 10, 17, and 18 which fall
therewith. See Claim Grouping, supra.
3. Rejection R3 of Claims 5 and 6
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R3 of claims 5 and 6 under § 103 (see App.
Br. 18), we sustain the Examiner’s rejection of these claims. Arguments not
made are waived.21
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2–7) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s

21 Appellant merely argues, these claims “depend from and add additional
features to independent claim 1. Appellant asserts that these claims are
patentable over the cited references for at least the reason that they depend
from claim 1, as well as for the features that they add.” App. Br.18.
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Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
(1) Under our Revised Guidance, governed by relevant case law,
claims 1–3, 5–7, 10, 17, and 18 are patent-ineligible under 35 U.S.C.
§ 101,and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 and R3 of claims 1–3, 5–7, 10, 17, and 18 under 35 U.S.C.
§ 103(a) over the cited prior art combinations of record, and we sustain the
rejections.
DECISION SUMMARY
Claims Rejected Basis 35
U.S.C. §
Affirmed Reversed
1–3, 5–7, 10, 17, 18 § 101 1–3, 5–7, 10, 17, 18
1–3, 7, 10, 17, 18 § 103
Matsubara,
Francino
1–3, 7, 10, 17, 18
5, 6 § 103
Matsubara,
Francino,
Hakim
5, 6
Overall Result 1–3, 5–7, 10, 17, 18
FINALITY AND 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)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED