Vincent Beraudier et al.

Patent Trials and Appeals Board

Jul 18, 2019

14227794 - (D) (P.T.A.B. Jul. 18, 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.
14/227,794 03/27/2014 Vincent Beraudier RSW920110082US2
(759CON)
8981
46320 7590 07/18/2019
Shutts & Bowen LLP
STEVEN M. GREENBERG
525 Okeechobee Blvd
# 1100
West Palm Beach, FL 33401
EXAMINER
KASSIM, HAFIZ A
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
07/18/2019 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):
PMetlika@shutts.com
aschneider@shutts.com
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte VINCENT BERAUDIER, PHILIPPE COURONNE,
and GEORGES-HENRI MOLL1
____________________

Appeal 2018-002718
Application 14/227,794
Technology Center 3600
____________________

Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 11–16, which are all claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is International Business
Machine Corporation. App. Br. 2.
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STATEMENT OF THE CASE2
The Invention
Appellants’ disclosed embodiments and claimed invention relate to
“business rules management and more particularly to integrated business
rules and constraints.” Spec. ¶ 3.
Representative Claim
Claim 11, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested prior-art limitation):
11. A method comprising:
receiving a set of candidate rules each having a left
hand side and a right hand side;
determining, for each candidate rule, by machine
logic, whether a no-failure condition is met, with the no-
failure condition being considered as met when a mixed
integer programming (MIP) constraint of a left hand side
of a corresponding enveloping rule for the candidate rule
did not fail;
removing, by machine logic from the set of
candidate rules, any of the rules in the candidate set for
which a no-failure condition is not met, but selecting, by
machine logic from the set of candidate rules, a conflict
set of selected rules such that each selected rule has been
determined to meet the no-failure condition;

2 Our decision relies upon Appellants’ Appeal Brief (“App. Br.,” filed
Oct. 13, 2017); Reply Brief (“Reply Br.,” filed Jan. 16, 2018); Examiner’s
Answer (“Ans.,” mailed Nov. 15, 2017); Final Office Action (“Final Act.,”
mailed June 2, 2017); and the original Specification (“Spec.,” filed
Mar. 27, 2014) (claiming benefit of U.S. Application No. 13/861,483, filed
Apr. 12, 2013).
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generating an agenda, including an agenda order,
for the conflict set of selected rules that ranks the conflict
set of the selected rules; and
applying the rules in the conflict set in agenda
order to a working memory of a rules engine in a
business rules management system (BRMS).
App. Br. 25 (Claims App’x).
Related Appeals
This Appeal is related to Appeal No. 2018-002761 of co-pending
Application Ser. No. 13/861,483.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Belcsak et al. (“Belcsak”) 2005/0182709 A1 Aug. 18, 2005
Proctor et al. (“Proctor”) 2008/0301079 A1 Dec. 4, 2008
Rejections on Appeal
R1. Claims 11–16 stand provisionally rejected on the grounds of
non-statutory obviousness-type double patenting (OTDP) as being
unpatentable over claims 23–33 of copending U.S. Application
No. 13/861,483. Final Act. 12.
R2. Claims 11–16 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 15.
R3. Claims 11–16 stand rejected under 35 U.S.C. § 112(a) as
lacking written description support. Final Act. 18.
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R4. Claims 11–16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Proctor and Belcsak. Final Act. 26.
CLAIM GROUPING
Based on Appellants’ arguments (App. Br. 3–24) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible
subject matter Rejection R2 of claims 11–16 on the basis of representative
claim 11; we decide the appeal of written description Rejection R3 of
claims 11–16 on the basis of representative claim 11; and we decide the
appeal of obviousness Rejection R4 of claims 11–16 on the basis of
representative claim 11. We address provisional Rejection R1 of claims 11–
16, infra.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
Based upon our review of the record, we conclude provisional non-
statutory obviousness-type double patenting Rejection R1 of claims 11–16 is
not ripe for review on Appeal for the reasons discussed below.

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 Appellants do 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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Based upon our de novo review of the record in light of recent
applicable law, informed by USPTO guidance with respect to patent-eligible
subject matter Rejection R2 under 35 U.S.C. § 101, we disagree with
Appellants’ arguments with respect to claims 11–16.
Further, based upon our review of the record, we find a preponderance
of the evidence supports particular arguments advanced by Appellants with
respect to written description Rejection R3 of claims 11–16 under § 112(a).
Finally, we disagree with Appellants’ arguments with respect to
obviousness Rejection R4 of claims 11–16 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 Appellants’ arguments.
We highlight and address specific findings and arguments regarding
claim 11 for emphasis as follows.
1. Provisional Non-Statutory OTDP Rejection R1 of Claims 11–16
Issue 1
The issue before us is whether the provisional OTDP rejection of
claims 11–16 is ripe for review.
In response to the Examiner’s provisional rejection of claims 11–16
(Final Act. 11–14), Appellants state “[t]hough the rejections for non-
statutory obviousness type double patenting had been only provisional in
nature, Appellants have since filed a terminal disclaimer rendering said
rejections moot.” App. Br. 3. The Examiner then “[a]cknowledg[es] . . .
Appellant’s Terminal Disclaimer filed on October 13, 2017.” Ans. 4.
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We note the record reflected in the USPTO database supports
Appellants’ assertion regarding the filing of a Terminal Disclaimer on
October 13, 2017, referencing co-pending U.S. Application 13/861,483.
Further, based upon USPTO records, the Terminal Disclaimer was approved
on Oct. 13, 2017.
However, on the record before us, the Examiner has not officially
withdrawn the provisional Rejection R1 of claims 11–16 in the Answer or
by any other communication.
Accordingly, due to lack of ripeness for review by the Board given the
likelihood of the Examiner’s ultimate withdrawal of this rejection in light of
the filing and acceptance of a Terminal Disclaimer, we do not reach the
merits of the Examiner’s provisional rejection, and leave it to the Examiner
to carry out any further necessary administrative actions relating thereto.
See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential) (Panels
have the flexibility to reach or not reach provisional double-patenting
rejections).
2. § 101 Rejection R2 of Claims 11–16
Issue 2
Appellants argue (App. Br. 3–15; Reply Br. 2–5) the Examiner’s
rejection of claim 11 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 11 patent-ineligible under
§ 101?
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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 claims 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)).
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

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 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 (1854)));
and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[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
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
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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.
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).
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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
(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

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)”).
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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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).
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-
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).

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.
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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:
(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.

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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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
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

10 See, e.g., Diehr, 450 U.S. at 187.
11 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR
Holdings 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
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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,
III.B.13
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

(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, as shown above. For more information concerning evaluation
of well-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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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
(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, thereby concluding the eligibility
analysis.
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However, if a determination is made that the element and combination
of elements does 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 11, 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 claim 11 is directed to
a mental process that . . . can be performed in the human
mind, or mathematical algorithm, akin to Electric
[P]ower [G]roup (EPG); and . . . FairWarning[,] . . .
receiving a set of candidate rules and determining and/or
analyzing each candidate rule if condition is satisfied,
generating an agenda, and applying the rules, which is an
idea of itself, and an abstract idea.
Final Act. 16.
We conclude claim 11 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 11 recites an abstract idea based upon the Revised Guidance.
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Claim 1 recites, in pertinent part, “[a] method,” that includes the steps
of:
(1) “[R]eceiving a set of candidate rules each having a
left hand side and a right hand side.”
(2) “[D]etermining . . . whether a no-failure condition is
met, with the no-failure condition being considered as met
when a mixed integer programming (MIP) constraint of a left
hand side of a corresponding enveloping rule for the candidate
rule did not fail.”
(3) “[R]emoving . . . any of the rules in the candidate set
for which a no-failure condition is not met, but selecting . . . a
conflict set of selected rules such that each selected rule has
been determined to meet the no-failure condition.”
(4) “[G]enerating an agenda . . . for the conflict set of
selected rules that ranks the conflict set of the selected rules.”
(5) “[A]pplying the rules in the conflict set in agenda
order to a working memory of a rules engine.”
Claims App’x.
The Specification provides context as to what the claimed invention is
directed to. In this case, the Specification discloses that the invention
“relates to business rules management and more particularly to integrated
business rules and constraints.” Spec. ¶ 3.
Appellants’ Abstract describes the invention as follows:
Embodiments of the present invention provide a method,
system and computer program product for an integrated
business rules management system (BRMS) and mixed integer
programming (MIP) technology application deployment. In an
embodiment of the invention, a method of rules processing with
MIP constraints can include selecting candidate rules from
amongst a set of rules in a rules engine executing in memory of
a computer and reducing the candidate rules to rules in a
conflict set according to constraints specified in the candidate
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rules. The method also can include conflict resolving the rules
in the conflict set and generating an agenda for the rules of the
conflict set. Finally, the method can include adding constraints
specified in the rules of the conflict set to working memory of
the rules engine and applying the rules in the conflict set in
agenda order to the working memory.
Spec. 19.
In at least partial agreement with the Examiner, we determine claim
11 recites a mental process that may also be performed by pen and paper.
This type of activity, i.e., analyzing and manipulating data, as recited in each
of limitations (2) through (4), 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.”).14
With respect to this step of the analysis, Appellants argue:
[I]n light of McRO[,] an “improvement in computer-
related technology” is not limited to improvements in the
operation of a computer or a computer network per se, but may

14 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.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
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also be claimed as a set of “rules” (basically mathematical
relationships) that improve computer related technology by
allowing computer performance of a function not previously
performable by a computer.
App. Br. 6. Appellants further contend:
Indeed, it is Appellants’ position that the entirety of
Appellants’ claim language in consideration of the teachings of
paragraphs [0021] through [0023] [of] the [S]pecification go
beyond the mere collection of information and the collection
and manipulation of information as evident from Appellants’
claim language which is limited by particular content that does
in fact change the character of the collected information. Thus,
as can be seen, when considering the specific claim elements of
independent claim [11][15] as a whole in light of the teachings of
the [S]pecification, and the legal holding of Enfish, McRO,
FairWarning and Electric Power Group, it is clear that
Appellants’ claims are directed to a process driven improvement
to computer-related technology by allowing computer
performance of a function not previously performable by a
computer . . . [such that] it is believed that no further analysis
under Mayo part 2 is required and Appellants’ claims are
indeed directed to patent eligible subject matter as dictated by
Enfish.
App. Br. 9. We disagree with Appellants’ arguments.
We disagree because, 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, 822 F.3d at 1330. 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

15 We note a typographical error in Appellants’ argument concerning
“claim 1” because the claims on Appeal do not include claim 1. We take this
as a harmless error, and consider Appellants’ argument to be directed to the
rejection of independent claim 11.
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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. Here, we find no
similarity between Appellants’ claimed business rules management and a
specific improvement to the way computers operate, embodied in the self-
referential table in Enfish.
Still further, in McRO, the claims were not held to be abstract because
they recited a “specific . . . improvement in computer animation” using
“unconventional rules that relate[d] sub-sequences of phonemes, timings,
and morph weight sets.” McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1302–03, 1307–08, 1314–15 (Fed. Cir. 2016). In McRO,
“the incorporation of the claimed rules, not the use of the computer,”
improved an existing technological process. Id. at 1314. 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.
We note that Appellants have not identified what the alleged “function
not previously performable by a computer” is, and therefore have not
persuasively identified how claim 11 improves an existing technological
process. See Alice, 134 S. Ct. at 2358 (explaining that “the claims in Diehr
were patent eligible because they improved an existing technological
process”). In addition, Appellants do not direct us to any evidence that the
claimed “determining,” “removing,” and “generating” steps correspond to
unconventional rules.
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Additionally, when claimed in a certain way, the collection of
information and analysis of information (e.g., recognizing certain data
within the dataset) are also abstract ideas. Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1351 (Fed. Cir. 2016) (“[T]he claims do not go beyond
requiring the collection, analysis, and display of available information in a
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.”); id. at
1353–54 (collecting information and “analyzing information by steps people
go through in their minds, or by mathematical algorithms, without more,
[are] essentially mental processes within the abstract-idea category); and see
FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093 (Fed.
Cir. 2016). (“The patented method . . . collects information regarding
accesses of a patient’s personal health information, analyzes the information
according to one of several rules (i.e., related to accesses in excess of a
specific volume, accesses during a pre-determined time interval, or accesses
by a specific user) to determine if the activity indicates improper access, and
provides notification if it determines that improper access has occurred.”).
Similarly here, we conclude Appellants’ claim 11 is directed to recognizing
certain data within the dataset, and thus to an abstract idea.
Appellants further contend:
Appellants have claimed an invention that reflects a particular
solution to a problem or a particular way to achieve a desired
outcome defined by the claimed invention, as opposed to
merely claiming the idea of a solution or outcome.”[ ] In
particular, claim 11 specifically requires that machine logic
determines whether a no-failure condition is met and then
removes from a set of candidate rules, any of the rules in the
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candidate set for which a no-failure condition is not met, but
selects, from the set of candidate rules, a conflict set of selected
rules such that each selected rule has been determined to meet
the no-failure condition. On its face, the human mind cannot
perform such method steps given that the claim language
requires machine logic to have done so.
Reply Br. 3 (citation omitted).
In response, we conclude, under the broadest reasonable interpretation
standard,16 limitations (2) through (4) recite steps that would ordinarily
occur when managing business rules management and integrating business
rules and constraints. See Final Act. 15–16; Ans. 4–5 (“[T]he problem is
employing business rules management and more particularly integrated
business rules and constraints. The ‘business rules and/or business
problem’, includes policies, requirements, and conditional statements that
are used to determine the tactical actions which is considered an abstract
idea.”).
For example, determining whether a rule belongs to a set of rules is an
operation that generally occurs when establishing or evaluating a set of
rules. Further, removing rules that do not belong to a set of rules and
ranking rules that belong to a set of rules are also operations that occur when

16 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.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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managing a rule set, whether initiated person-to-person, on paper, or using a
computer.
Thus, under Step 2A(i), we agree with the Examiner that claim 11’s
method recites a mental process and further conclude claim 11, under our
Revised Guidance, recites a judicial exception of a concept performed in the
human mind (including an observation, evaluation, judgment, and opinion),
i.e., a mental process, and thus is 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.
We find each of the limitations (2) through (4) of claim 11 recite
abstract ideas as identified in Step 2A(i), supra, and none of the limitations
integrate the judicial exception of the recited mental process 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.
As to the specific limitations, we find limitation (1) recites
insignificant data gathering. See MPEP § 2106.05(g). Data gathering, as
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performed by the steps or function in Appellants’ 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 find limitation (5) recites insignificant post solution
activity.17 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). On this record, we are of the view that Appellants’ claims do
not operate the recited generic computer components in an unconventional
manner to achieve an improvement in computer functionality. See MPEP
§ 2106.05(a).
Therefore, 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. Thus, on this record, Appellants have not
shown an improvement or practical application under the guidance of
Manual of Patent Examining Procedure 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 do
Appellants advance any arguments in the Brief(s) that are directed to the
Bilski machine-or-transformation test, which would only be applicable to the

17 We also note the “applying” step, other than the computer-related aspects,
i.e., “applying . . . to a working memory,” can be carried out by a human in
the mind or by use of pen and paper. See CyberSource, 654 F.3d at 1375.
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method (process) claims on appeal. See MPEP §§ 2106.05(b) (Particular
Machine) and 2106.05(c) (Particular Transformation).
Therefore, we conclude the abstract idea 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
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(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
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
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equivalent) with an abstract idea18; mere instructions to implement an
abstract idea on a computer19; 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.20
Evaluating representative claim 11 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
managing business rules management and integrating business rules and
constraints 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
conventional to a skilled artisan in the relevant field is a question of fact.”
Berkheimer, 881 F.3d at 1368.
With respect to this step of the analysis, Appellants contend:
Appellants’ claims specify with particularity exactly how the
abstract concept of rules processing with MIP constraints is
achieved without foreclosing all possible methodologies for
achieving the abstract concept of rules processing with MIP
constraints . . . .
[I]n Intellectual Ventures the Federal Circuit explained that
patent eligibility existed where the patent at issue provided an
Internet-based solution to solve a problem unique to the Internet

18 Alice, 573 U.S. at 221–23.
19 Alice, 573 U.S. at 221, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer (citing Mayo, 566 U.S.
at 84–85).
20 Alice, 573 U.S. at 225, e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
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that (1) did not foreclose other ways of solving the problem,[21]
and (2) recited a specific series of steps that resulted in a
departure from the routine and conventional sequence of events
. . . .
Here, Appellants’ claims . . . are restricted as to how the
innovative concept of “rules processing with MIP constraints”
is achieved without foreclosing other ways of solving the
problem at hand while reciting a specific series of steps that
result in a departure from the routine and conventional
sequence of events.[ ]
App. Br. 12–14 (citation omitted).
As evidence of the conventional nature of the recited “machine logic”
and “a working memory of a rules engine in a business managements
system” in method claim 11, the Specification discloses the “computer
program instructions may be provided to a processor of a general purpose
computer.” Spec. ¶ 35 (emphasis added).
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 Appellants’
Specification, as quoted above.22

21 We are not persuaded by this argument regarding preemption. See Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(“While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility”).
22 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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First, we note the lack of pre-emption is not a standalone test, i.e.,
absence of pre-emption does not imply patentable subject matter. Even if
“the abstract concept of rules processing with MIP constraints is achieved
without foreclosing all possible methodologies for achieving the abstract
concept of rules processing with MIP constraints” as argued by Appellants,
lack of preemption does not make a claim any less abstract. See Ariosa, 788
F.3d at 1379; see also Parker v. Flook, 437 U.S. 584, 589 (1978).
Further, in Intellectual Ventures I, the Federal Circuit held:
The patent at issue in DDR provided an Internet-based solution
to solve a problem unique to the Internet that (1) did not
foreclose other ways of solving the problem, and (2) recited a
specific series of steps that resulted in a departure from the
routine and conventional sequence of events after the click of a
hyperlink advertisement . . . . The patent claims here do not
address problems unique to the Internet, so DDR has no
applicability.
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1371 (Fed. Cir. 2015) (citation omitted, emphasis added).
We find Appellants’ reliance on Intellectual Ventures misplaced, as the
Appellants’ claims do not address problems unique to the Internet. In DDR,23
the claims at issue involved, inter alia, “web pages displays [with] at least one
active link associated with a commerce object associated with a buying
opportunity of a selected one of a plurality of merchants” (claim 1 of US
7,818,399). The Federal Circuit found the claims in DDR to be patent-eligible
under step one of the Alice test because “the claimed solution is necessarily
rooted in computer technology in order to overcome a problem specifically

23 DDR Holdings v. Hotels.com, 773 F.3d 1245, 1255 (Fed. Cir. 2014).
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arising in the realm of computer networks.” DDR Holdings, 773 F.3d at 1257.
Specifically, the Federal Circuit found the claims addressed the “challenge of
retaining control over the attention of the customer in the context of the
Internet.” Id. at 1258. We find the rejected claims are dissimilar to DDR’s
web page with an active link, and the Specification does not support the view
that the computer related claim elements are unconventional. See Spec. ¶ 35.
Additionally, the Manual of Patent Examining Procedure, based upon
our precedential guidance, provides additional considerations with respect to
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
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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”).
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a method that includes a “machine logic” and “a working
memory of a rules engine in a business managements system” (claim 11), as
argued by Appellants, 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 11, 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, because the claims fail under both the Step 2A and Step 2B
analyses, we sustain the Examiner’s § 101 rejection of independent claim 11,
and grouped claims 12–16, not argued separately, and which fall therewith.
See Claim Grouping, supra.
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3. § 112(a) Rejection R3 of Claims 11–16
Issue 3
Appellants argue (App. Br. 15–20; Reply Br. 6–7) the Examiner’s
rejection of claim 11 under 35 U.S.C. § 112(a) as lacking written description
support is in error. These contentions present us with the following issue:
Did the Examiner err in rejecting claim 11 under § 112(a) as lacking
written description support?
Analysis
The Examiner finds:
Independent claim 11 recites the following limitation:
determining, for each candidate rule, by machine logic,
whether a no-failure condition is met, with the no-failure
condition being considered as met when a mixed integer
programming (MIP) constraint of a left hand side of a
corresponding enveloping rule for the candidate rule did not
fail.
The specification lacks adequate written description for
how the determining, for each candidate rule, by machine logic,
whether a no-failure condition is met, with the no-failure
condition being considered as met when a mixed integer
programming (MIP) constraint of a left hand side of a
corresponding enveloping rule for the candidate rule did not fail
is performed.
Final Act. 18.
Appellants contend:
[P]aragraph [0017][24] of the original specification is clear that
“the constraint can be tested and in response to a failure of a

24 We note that ¶ 17 of the Specification discloses, “Figure 6 is a flow chart
illustrating a process for rules application performed by the rules application
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constraint when tested, the enveloping rule can be removed
from the candidate set of applicable rules.” This is on its face, a
“no-failure condition”.
App. Br. 19. Additionally, Appellants argue:
The claimed method also includes the determination, for each
candidate rule, by machine logic, of whether a no-failure
condition is met, with the no-failure condition being considered
as met when a mixed integer programming (MIP) constraint of
a left hand side of a corresponding enveloping rule for the
candidate rule did not fail. (Par. [0025])
App. Br. 2 (§ III “SUMMARY OF CLAIMED SUBJECT MATTER”).
Contrary to Appellants’ cited portion, we find the Specification
provides written description support for the contested claim limitation as
follows:
[0026] In more particular illustration of the selection of the
rules, Figure 4 is a flow chart illustrating a process for rules
selection . . . in block 405, a set of rules can be retrieved and in
block 410 a first rule in the set can be selected for processing.
In decision block 415, it can be determined whether or not all
decisions implicated by the rule are bound by a left hand side
constraint of the rule. If so, in block 420 the enveloped
constraint can be tested and in decision block 425, if the
constraint fails in block 430 the enveloping rule can be
removed from the set of selected rules.
Spec. ¶ 26 (emphases added).
Therefore, based upon the findings above, on this record, we are
persuaded of error in the Examiner’s finding that Appellants’ Specification

module of Figure 2.” Further, ¶ 17 of the Specification discloses, “FIG. 5 is
a flow chart illustrating a process for conflict resolution performed by the
conflict resolution module of FIG. 2.” It appears that neither ¶ 17 (as filed),
nor ¶ 17 (as published) provides written support for the contested limitation.
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does not provide written description support for the contested “determining”
step of claim 11.
Accordingly, we reverse the Examiner’s written description Rejection
R3 of claim 11 and grouped claims 12–16. See Claim Grouping, supra.
4. § 103 Rejection R4 of Claims 11–16
Issue 4
Appellants argue (App. Br. 20–24; Reply Br. 7–9) the Examiner’s
rejection of claim 11 under 35 U.S.C. § 103(a) as being obvious over the
combination of Proctor and Belcsak 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 method that includes, inter alia, the limitation of
removing, by machine logic from the set of candidate rules, any
of the rules in the candidate set for which a no-failure condition
is not met, but selecting, by machine logic from the set of
candidate rules, a conflict set of selected rules such that each
selected rule has been determined to meet the no-failure
condition,
as recited in claim 11?
Analysis
Appellants contend:
[P]aragraph [0026] [of Proctor] teaches only the meeting of
LHS conditions fairly mapped by Examiner to the claimed
determination of a “no-failure condition” and also the
“activation” of a corresponding rule and the placement of the
rule in an “agenda of a rule engine” if the LHS conditions of the
rule are met and determined to be true, while paragraph [0067]
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[of Proctor] provides a specific instance of the processing of the
LHS conditions and the placement of a corresponding rule into
a “ruleflow group”. However, lacking in both paragraphs, is
the claimed notion of removing from a candidate set of rules
any rule for which an enveloped constraint does not have a
“no-failure” condition. In fact, the entirety of both
paragraphs neglects to address the scenario where a LHS
condition of a rule is NOT satisfied or found NOT to be
true.
App. Br. 22–23.
In response, the Examiner concludes, as a matter of claim
construction,
“removing from a set of candidate set of rules any rule for
which an enveloped constraint does not have a ‘no-failure’
condition” describes a conditional step (i.e., “removing from a
set of candidate set of rules any rule . . .”) that only need be
performed upon the satisfaction of a condition precedent (i.e.,
“an enveloped constraint does not have a ‘no-failure’
condition”). As such, in the event that the condition precedent
is not satisfied, no rule removal is required.
Ans. 14; see also id. at 15 (citing Ex parte Schulhauser, Appeal No. 2013-
007847, at *9 (PTAB, April 28, 2016) (precedential) (holding “The
Examiner did not need to present evidence of the obviousness of the
remaining method steps of claim 1 that are not required to be performed
under a broadest reasonable interpretation of the claim (e.g., instances in
which the electrocardiac signal data is not within the threshold
electrocardiac criteria such that the condition precedent for the determining
step and the remaining steps of claim 1 has not been met.”)); see also Ex
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parte Katz, Appeal No. 2010-006083, 2011 WL 514314, at *4–5 (BPAI
Jan. 27, 2011).25
Appellants further contend:
[P]aragraph [0031] of Proctor refers to the matching by a rules
engine against facts which may be removed from working
memory—so called retraction expanded upon in paragraph
[0048] as when the rule engine elects “not to track or match a
fact previously asserted into a working memory”. So much is a
far cry from the claimed [conditional “removing” limitation].
Reply Br. 9.
We agree with the Examiner’s claim construction that, in the case of
the contested conditional method claim limitation, the prior art is not
required to teach or suggest both
removing, by machine logic from the set of candidate rules, any
of the rules in the candidate set for which a no-failure condition
is not met, [and] selecting, by machine logic from the set of
candidate rules, a conflict set of selected rules such that each
selected rule has been determined to meet the no-failure
condition,
as recited in claim 11. Ans. 14–15.

25 See, also e.g., Applera Corp. v. Illumina, Inc., 375 Fed. Appx. 12, 21
(Fed. Cir. 2010) (unpublished) (affirming a district court's interpretation of a
method claim as including a step that need not be practiced if the condition
for practicing the step is not met); Cybersettle, Inc. v. Nat 'l Arbitration
Forum, Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007) (unpublished) (“It is
of course true that method steps may be contingent. If the condition for
performing a contingent step is not satisfied, the performance recited by the
step need not be carried out in order for the claimed method to be
performed.”).
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We agree with the Examiner because under our precedential
Schulhauser decision, the Examiner need not “present evidence of the
obviousness of the remaining method steps . . . that are not required to be
performed under a broadest reasonable interpretation of the claim.” See
Schulhauser at 9. In particular, we agree with the Examiner’s claim
construction that, when each rule has been determined to meet the no-failure
condition, no rule needs to be removed. Therefore, the “removing” step of
claim 11 is a conditional step, and the Examiner does not have to present
evidence relating thereto.
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the holding of Schulhauser with
respect to the disputed limitation of claim 11, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 11, and grouped
claims 12–16 which fall therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2–9) 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
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellants have not shown.
Appeal 2018-002718
Application 14/227,794

37
CONCLUSIONS
(1) We do not reach the merits of the Examiner’s provisional non-
statutory obviousness-type double patenting Rejection R1 of claims 11–16
because this issue is not ripe for decision by the Board.
(2) Under our Revised Guidance, governed by relevant case law,
claims 11–16 are patent-ineligible under 35 U.S.C. § 101, and we sustain
Rejection R2.
(3) The Examiner erred with respect to written description
Rejection R3 of claims 11–16 rejected under § 112(a), and we do not sustain
the rejection.
(4) The Examiner did not err with respect to obviousness Rejection
R4 of claims 11–16 under 35 U.S.C. § 103(a) over the cited prior art
combination of record, and we sustain the rejection.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. § 41.50(a)(1).
DECISION
We affirm the Examiner’s decision rejecting claims 11–16.
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