Vincent R. Re

Patent Trials and Appeals Board

Oct 25, 2019

12610591 - (D) (P.T.A.B. Oct. 25, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/610,591 11/02/2009 Vincent R. Re 063170.9179 1755
106095 7590 10/25/2019
Baker Botts LLP/CA Technologies
2001 Ross Avenue
SUITE 900
Dallas, TX 75201
EXAMINER
STERRETT, JONATHAN G
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
10/25/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTOmail1@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VINCENT R. RE
____________

Appeal 2018-005900
Application 12/610,5911
Technology Center 3600
_______________

Before HUNG H. BUI, ADAM J. PYONIN, and
MICHAEL M. BARRY, Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–24, 26, 28, and 29, which are all the
claims pending in the application. Claims 25 and 27 are canceled. Appeal
Br. 27–35 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The real party in interest is CA, Inc. Appeal Br. 4.
2 Our Decision refers to Appellant’s Appeal Brief (“Appeal Br.”) filed
December 14, 2017; Examiner’s Answer (“Ans.”) mailed March 14, 2018;
Final Office Action (“Final Act.”) mailed May 10, 2017; and original
Specification (“Spec.”) filed November 2, 2009.
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STATEMENT OF THE CASE
Appellant’s invention relates to “a system and method for determining
and/or reducing costs associated with utilizing objects [i.e., hardware or
software in a computing environment].” Spec. 1:3–5; see also id. at 2:2–4,
5:12–15. Appellant’s Figure 4 shows “a method for determining the costs
associated with utilizing one or more objects,” as reproduced below:

As shown in Figure 4, the method includes (1) receiving, in near real
time, data associated with a utilization of one or more objects at step 314; (2)
comparing the data associated with the utilization of the one or more objects
with one or more rules associated with the utilization of the one or more
objects at step 318; (3) determining, in near real time, a cost associated with
the utilization of the one or more objects based at least on the comparison;
and (4) providing, in near real time, an indication of the cost associated with
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the utilization of the one or more objects at step 326. Spec. 3:19, 4:12;
Abstract.
Claims 1, 10, and 19 are independent. Claim 1 is illustrative of
Appellant’s invention on appeal, as reproduced below:
1. A method comprising:
discovering that a plurality of software licenses has been
loaded into a computing system;
determining, by the computing system, a plurality of rules
using the plurality of software licenses, wherein each of the
plurality of rules define[s] a method of cost analysis of a
utilization of one or more objects;
wherein each object is associated with a respective agent;
providing first instructions from the computing system to
the agents to monitor the utilization of the one or more objects;
receiving, in near real time from the agents, data
associated with the utilization of the one or more objects;
comparing, by the computing system, the data associated
with the utilization of the one or more objects with the plurality
of rules from the plurality of software licenses;
determining which configuration of hardware results in the
lowest utilization cost for the computing system based on the
comparison; and
providing second instructions from the computing system
to the agents to adjust utilization of the associated one or more
objects, wherein adjusting utilization of the associated one or
more objects in accordance with the software license lowers
utilization cost of the one or more objects.
Appeal Br. 27 (Claims App.).

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EXAMINER’S REJECTIONS & REFERENCES
(1) Claims 1–24, 26, 28, and 29 stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to a patent-
ineligible abstract idea without significantly more. Final Act. 10–13.
(2) Claims 1–24, 26, and 28 stand rejected under
35 U.S.C. § 103(a) as being obvious over Depro et al. (US 7,908,606 B2;
issued Mar. 15, 2011; “Depro”), Alam et al. (US 2008/0319926 A1;
published Dec. 25, 2008; “Alam”), Childress et al. (US 8,041,797 B2; issued
Oct. 18, 2011; “Childress”), and Carmody et al. (US 2003/0055749 A1;
published Mar. 20, 2003; “Carmody”). Final Act. 13–26.
(3) Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
obvious over Depro, Alam, Childress, Carmody, and Jacobs et al. (US
2008/0010361 A1; published Jan. 10, 2008; “Jacobs”). Final Act. 27–28.

ANALYSIS
35 U.S.C. § 101
In support of the § 101 rejection of claims 1–24, 26, 28, and 29, the
Examiner determines Appellant’s claims are directed to “adjust[ing]
utilization of one or more resources according to software licenses” and
include limitations such as “determining a software licenses’ rules,
comparing the utilization data with the rules, and adjust[ing] utilization
according to the rules,” which are nothing more than a series of mental
processes and similar to the claims found by the Supreme Court to be an
abstract idea in (1) Parker v. Flook, 437 U.S. 584, 589–90 (1978) (holding a
method for updating an alarm limit — measuring the present value of a
process variable (e.g., temperature or pressure exceeding safety limits),
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using an algorithm to calculate an updated alarm-limit value, and adjusting
the updated value — is an abstract idea); (2) Classen Immunotherapies, Inc.
v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011) (holding the concept of
“collecting and comparing known information” is an abstract idea); and (3)
Electric Power Group, LLC, v. Alstom, 830 F.3d 1350 (Fed. Cir. 2016)
(holding that the concept of “collecting information, analyzing it, and
displaying certain results of the collection and analysis” is an abstract idea).
Final Act. 7–8. According to the Examiner, “managing the usage of
software [objects] in order to better manage monetary costs [] is a business,”
i.e., a fundamental economic practice. Ans. 7.
The Examiner then determines the additional element(s) (i.e.,
“processor”), when analyzed individually and as an ordered combination, do
not amount to significantly more than the abstract idea, because these
additional elements (1) are “generic computer elements”; (2) are recited at a
high level of generality “to perform their basic functions of storing,
retrieving and executing”; and (3)
do not recite, for example: an improvement to another
technology or technical field; improvements to the functioning
of the computer itself; applying the judicial exception with, or by
use of, a particular machine; effecting a transformation or
reduction of a particular article to a different state or thing;
adding a specific limitation other than what is well-understood,
routine and conventional in the field, or adding unconventional
steps that confine the claim to a particular useful application; or
other meaningful limitations beyond generally linking the use of
the judicial exception to a particular technological environment.

Final Act. 7, 9–10.
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Legal Framework
To determine whether claims are patent eligible under § 101, we apply
the Supreme Court’s two-step framework articulated in Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208 (2014). First, we determine whether the claims are
directed to a patent-ineligible concept: laws of nature, natural phenomena,
and abstract ideas. Id. at 216. If so, we then proceed to the second step to
consider the elements of the claims “individually and ‘as an ordered
combination’” to determine whether there are additional elements that
“‘transform the nature of the claim’ into a patent-eligible application.” Id. at
217. In other words, the second step is to “search for an ‘inventive
concept’—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. at 218 (alteration in original,
internal quotation marks omitted).
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d at 1353; Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335–36 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
In an effort to achieve clarity and consistency in how the U.S. Patent
and Trademark Office (the “Office”) applies the Supreme Court’s two-step
framework, the Office has published revised guidance interpreting governing
case law and establishing a prosecution framework for all patent-eligibility
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analysis under Alice and § 101 effective as of January 7, 2019. 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57
(Jan. 7, 2019) (“2019 Revised Guidance”).
2019 Revised Guidance
Under the 2019 Revised Guidance, we first look under Alice step 1 or
“Step 2A” to whether the claim recites:
(1) Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., [i] mathematical concepts,
[ii] mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment,
opinion), or [iii] certain methods of organizing human activity
such as a fundamental economic practice or managing
personal behavior or relationships or interactions between
people); and

(2) Prong Two: additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–
(h)).3
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55, Revised Step 2A,
Prong One (Abstract Idea) and Prong Two (Integration into A Practical
Application). Only if a claim: (1) recites a judicial exception, and (2) does
not integrate that exception into a practical application, do we then evaluate
whether the claim provides an “inventive concept” under Alice step 2 or
“Step 2B.” See 2019 Revised Guidance at 56; Alice, 573 U.S. at 217–18.
For example, we look to whether the claim:
1) adds a specific limitation beyond the judicial exception that is
not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

3 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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2) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
In the briefing, Appellant and Examiner refer to prior USPTO
guidance regarding § 101, i.e., July 2015 Update on Subject Matter
Eligibility, 80 Fed. Reg. 45,429 (July 30, 2015) (“the 2015 Update”). Final
Act. 7. However, the 2015 Update as well as other prior guidance,
including: (1) 2014 Interim Guidance on Patent Subject Matter Eligibility,
79 Fed. Reg. 74,618 (December 16, 2014); (2) May 2016 Subject Matter
Eligibility Update, 81 Fed. Reg. 27,381 (May 6, 2016); and (3)
Memorandum on Subject Matter Eligibility Decisions dated Nov. 2, 2016,
have all been superseded by the 2019 Revised Guidance. See 2019 Revised
Guidance, 84 Fed. Reg. at 52; see also October 2019 Update: Subject Matter
Eligibility, page 17. As such, our analysis will not address the sufficiency of
the Examiner’s rejection against the cited prior guidance. Rather, we review
the 101 rejection de novo (Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333
(Fed. Cir. 2012)) in comport with the 2019 Revised Guidance as discussed
below.
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance
Step 2A—Prong 1
Appellant does not dispute the Examiner’s determination that claims
1–24, 26, 28, and 29 recite “mental processes” or “a fundamental economic
practice.” Final Act. 7–8; Ans. 7. Instead, Appellant argues claims 1–24,
26, 28, and 29 are not directed to an abstract idea because (1) these claims
“provide a solution to managing objects in a computing system beyond
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generally linking any abstract idea to a particular technology environment,”
and (2) the Examiner has oversimplified and mischaracterized the claims as
(i) similar to Classen because the claims “go beyond just ‘collecting and
comparing known information’ by at least applying the derived information
and adjusting the utilization of objects within a computing system,” or (ii)
similar to Electric Power Group because the claims “do more than simply
collect, analyze and display information by at least applying the derived
information to adjust the utilization of objects within a computing system.”
Appeal Br. 10–14.
Appellant’s arguments are not persuasive. At the outset, we note
Appellant’s Specification and claims describe (1) how traditionally, objects
(i.e., hardware or software) in a computing environment are “monitored
based on resource utilization (i.e., how busy is the server running) and
service levels (i.e., what is the response time),” but “[t]hese traditional
techniques [] are deficient because they do not allow for intelligent, business
decision making” (Spec. 2:1–5); and (2) “how to better manage costs
[associated with these objects] in a computer system” (Ans. 6) by simply
(i) collecting data associated with the utilization of one or more objects,
(ii) comparing it using one or more rules associated with the utilization of
the one or more objects, as shown in Figure 4, and then (iii) providing an
indication of the cost associated with the utilization of the one or more
objects based at least on the comparison. Spec. 3:2–19; Abstract. This way,
“the user may understand the cost associated with the utilization of the
objects.” Spec. 18:5–6.
For example, Appellant’s claim 1 recites a method comprising:
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[1] discovering that a plurality of software licenses has been
loaded into a computing system;

[2] determining, by the computing system, a plurality of rules
using the plurality of software licenses, wherein each of the
plurality of rules define[s] a method of cost analysis of a
utilization of one or more objects;

[3] wherein each object is associated with a respective agent;

[4] providing first instructions from the computing system to
the agents to monitor the utilization of the one or more objects;

[5] receiving, in near real time from the agents, data
associated with the utilization of the one or more objects;

[6] comparing, by the computing system, the data associated
with the utilization of the one or more objects with the plurality
of rules from the plurality of software licenses;

[7] determining which configuration of hardware results in the
lowest utilization cost for the computing system based on the
comparison; and

[8] providing second instructions from the computing system
to the agents to adjust utilization of the associated one or more
objects, wherein adjusting utilization of the associated one or
more objects in accordance with the software license lowers
utilization cost of the one or more objects.

Appeal Br. 27 (Claims App.) (bracketing added).

These limitations of Appellant’s claim 1, under their broadest
reasonable interpretation, recite (1) collecting information regarding “rules
using [] software licenses” and “utilization of one or more objects [i.e.,
hardware or software],” (2) comparing such known information to determine
lowest utilization costs, and then (3) outputting “instructions . . . to adjust
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utilization of [] one or more objects,” which are known business activities
used to better manage costs of utilizing one or more objects [hardware or
software] is a computing environment, i.e., a fundamental economic
practice, as recognized by the Examiner. Ans. 7 (quoting claim 1).
Such activities are squarely within the realm of abstract ideas, like
(1) the risk hedging in Bilski v. Kappos, 130 S. Ct. 3218 (2010); (2) the
intermediated settlement in Alice, 573 U.S. at 220; (3) verifying credit card
transactions in CyberSource, 654 F.3d 1366, 1370 (Fed. Cir. 2011);
(4) guaranteeing transactions in buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1354 (Fed. Cir. 2014); (5) distributing products over the Internet in
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014);
(6) determining a price of a product offered to a purchasing organization in
Versata Dev. Grp., Inc. v. SAP America, Inc., 793 F.3d 1306 (Fed. Cir.
2015); and (7) pricing a product for sale in OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359 (Fed. Cir. 2015). Collecting, comparing known
information to determine lowest utilization costs, and then outputting
“instructions . . . to adjust utilization of [] one or more objects” is also a
building block of a market economy and, like risk hedging and
intermediated settlement, is an “abstract idea” beyond the scope of § 101.
See Alice, 573 U.S. at 220.
Alternatively, collecting information regarding “rules using []
software licenses” and “utilization of one or more objects [i.e., hardware or
software],” comparing such known information to determine lowest
utilization costs, and then outputting “instructions . . . to adjust utilization of
[] one or more objects” to a user are nothing more than a series of “mental
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processes” that could also be performed in the human mind or by a human
using a pen and paper.
For example, limitations (1)–(4) of Appellant’s claim 1 can be
performed by a user who reviews the terms and rules of (paper) software
licenses and observes the utilization of one or more objects. Limitations
(5)–(8) of Appellant’s claim 1 can be performed by the same user who
collects and compares information associated with the use of one or more
objects with the rules of the software licenses, observes the lowest utilization
cost and then adjust the utilization of one or more objects for the lowest cost.
See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d at 1372–73 (“[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under § 101.”); see also In re Comiskey, 554
F.3d 967, 979 (Fed. Cir. 2009) (“[M]ental processes—or processes of human
thinking—standing alone are not patentable even if they have practical
application.”); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena
of nature, . . . mental processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and technological work”
(emphasis added).). Additionally, mental processes remain unpatentable
even when automated to reduce the burden on the user of what once could
have been done with pen and paper. CyberSource, 654 F.3d at 1375 (“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.”).
As further recognized by the Examiner, collecting, comparing known
information, and outputting instructions to adjust “instructions . . . to adjust
utilization of [] one or more objects” to a user, as recited, is also analogous
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to the claims identified by the Federal Circuit as directed to an abstract idea
in (1) Classen and (2) Electric Power Group. Final Act. 7–8.
According to the Federal Circuit, “collecting information, including
when limited to particular content (which does not change its character as
information), as within the realm of abstract ideas.” See, e.g., Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015;
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015);
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n,
776 F.3d 1343, 1347 (Fed. Cir. 2014); Digitech Image Techs., LLC v. Elecs.
for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011). Likewise,
“analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more,” is “essentially mental processes
within the abstract-idea category.” See, e.g., TLI Commc’ns, 823 F.3d at
613; Digitech, 758 F.3d at 1351; SmartGene, Inc. v. Advanced Biological
Labs., SA, 555 F. App’x 950, 955 (Fed. Cir. 2014); Bancorp Servs., L.L.C. v.
Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir.
2012); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372
(Fed. Cir. 2011); SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319,
1333 (Fed. Cir. 2010); see also Mayo, 132 S. Ct. at 1301; Parker v. Flook,
437 U.S. 584, 589–90 (1978); Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
And the Federal Circuit has recognized that merely presenting the results of
abstract processes of collecting and analyzing information, without more
(such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis. See, e.g., Content Extraction,
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776 F.3d at 1347; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed.
Cir. 2014).
We, therefore, conclude limitations (1)–(8) in Appellant’s claim 1
recite nothing more than collecting, comparing known information, and
outputting instructions to adjust “instructions . . . to adjust utilization of []
one or more objects” to a user, which is “a fundamental economic practice”
and/or a series of “mental processes” and thus, in accordance with the
Revised Guidance, an abstract idea. See 2019 Revised Guidance (Revised
Step 2A, Prong One), 84 Fed. Reg. at 52, 54.
Because the claims recite an abstract idea, we next proceed to Step 2A,
Prong Two of the Revised Guidance, to determine whether the claims
integrate the recited idea into a practical application). See Revised Guidance,
84 Fed. Reg. at 54.
Step 2A—Prong 2 (Integration into Practical Application)
Under Revised Step 2A, Prong Two of the Revised Guidance, we
determine if the claims (i.e., additional limitations beyond the judicial
exception) integrate the judicial exception into a practical application.
However, we discern no additional element (or combination of elements)
recited in Appellant’s claims 1–24, 26, 28, and 29 that integrates the judicial
exception into a practical application. See Revised Guidance, 84 Fed. Reg.
at 54–55 (“Prong Two”). For example, Appellant’s additional elements (i.e.,
“computing system”) in claims 1–24, 26, 28, and 29 do not (1) improve the
functioning of a computer or other technology, (2) are not applied with any
particular machine (except for generic computer components), (3) do not
effect a transformation of a particular article to a different state, and (4) are
not applied in any meaningful way beyond generally linking the use of the
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judicial exception to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See MPEP §§ 2106.05(a)–(c), (e)–(h).
For business-centric inventions such as Appellant’s invention
involving collecting information, comparing known information to
determine lowest utilization costs, and then outputting “instructions . . . to
adjust utilization of [] one or more objects” to a user, the “integration into a
practical application” prong requires consideration of whether the claims
purport to provide “a technical solution to a technical problem” as required
by the Federal Circuit’s precedential decisions in (1) DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) and (2) Amdocs
(Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). See
MPEP § 2106.05(a).
The Federal Circuit found DDR’s claims are patent-eligible under
§ 101 because DDR’s claims: (1) do not merely recite “the performance of
some business practice known from the pre-Internet world” as in Bilski and
Alice; but instead (2) provide a technical solution to a technical problem
unique to the Internet, i.e., a “solution . . . necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” DDR, 773 F.3d at 1257. Likewise, the Federal
Circuit also found Amdocs’ claims patent-eligible under § 101 because, like
DDR, Amdocs’ claims “entail[] an unconventional technological solution
(enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases)” and
“improve the performance of the system itself.” Amdocs, 841 F.3d at 1300,
1302.
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Appellant argues the claims address “the problem of combating
consistently high costs in management of computer systems” and “are
directed specifically to the management of a computing system, and
improvements in that technology” and, like the claims in DDR, “improve
surrounding systems, modify and improve the computing system of the
enterprise itself and thus improve the computer technology.” Appeal Br.
14–15. Appellant also argues the claims describe “distributed data
gathering, filtering, and enhancements that enable load distribution” and,
like the claims in Amdocs, “provide a real benefit, making the system more
cost-efficient.” Appeal Br. 16–17.
We do not agree. Collecting, comparing known information to
determine lowest utilization costs, and then outputting “instructions . . . to
adjust utilization of [] one or more objects” to a user in the manner recited in
Appellant’s claims does not provide any “technical solution to a technical
problem” as contemplated by the Federal Circuit in DDR and Amdocs. See
MPEP § 2106.05(a). For example, Appellant’s claimed collecting and
comparing of known information to determine lowest utilization costs, and
then outputting “instructions . . . to adjust utilization of [] one or more
objects” does not provide a technical solution to a technical problem unique
to the Internet, i.e., a “solution . . . necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” DDR, 773 F.3d at 1257. Nor does Appellant’s
invention entail, like Amdocs, any “unconventional technological solution
(enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases)” and
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“improve the performance of the system itself.” Amdocs, 841 F.3d at 1300,
1302.
As correctly recognized by the Examiner, the focus of Appellant’s
invention is “to better manage costs in a computer system” which is “not a
problem that is inherently tied to either computer networks, computer
technology, or the Internet as discussed in DDR.” Final Act. 4; Ans. 6–7.
Likewise, Appellant’s “invention [] is directed to improve business decision
making with respect to addressing software usage costs, rather than improve
the operation of the computer system, per se, e.g. to increase speed, reduce
memory requirements, etc.,” “which does not provide a technical nor [sic]
technological solution in the same way Amdocs did.” Ans. 10. Contrary to
Appellant’s arguments, utilizing a generic computer component (i.e.,
“computer system”) to compare known information regarding “rules using []
software licenses” and “utilization of one or more objects [i.e., hardware or
software]” to determine lowest utilization costs, and then output
“instructions . . . to adjust utilization of [] one or more objects,” as recited, is
insufficient to show integration into a practical application. See MPEP
§ 2106.05(f). Instead, these generic computer components are simply the
“automation of the fundamental economic concept,” OIP Techs., 788 F.3d at
1362–63. “[M]erely requiring generic computer implementation,” “does not
move [the claim] into [§] 101 eligibility territory.” buySAFE, 765 F.3d at
1354.
A claim for a new abstract idea is still an abstract idea. See Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016); see
also SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir.
2018) (“No matter how much of an advance in the finance field the claims
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recite, the advance lies entirely in the realm of abstract ideas, with no
plausibly alleged innovation in the non-abstract application realm.”).
For these reasons, we are not persuaded that Appellant’s “additional
elements” recited in claims 1–24, 26, 28, and 29 integrate the abstract idea
into a practical application.
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Under the 2019 Revised Guidance, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 56. Here, we find no element
or combination of elements recited in Appellant’s claims 1–24, 26, 28, and
29 that contain any “inventive concept” or add anything “significantly more”
to transform the abstract concept into a patent-eligible application.
Appellant does not identify any specific limitation of claims 1, 10, and
19 beyond the judicial exception that is not “‘well-understood, routine,
conventional’ in the field” as per MPEP § 2106.05(d). Instead, Appellant
argues “the present claims are [] directed to significantly more than any
abstract idea” because these claims improve “surrounding systems, and
modify[] and improve the computing system of the enterprise itself.”
Appeal Br. 16–17. Appellant also argues, like the claims in BASCOM
Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016), “the present claims are much more similar to those in Bascom, where
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the ‘installation of a filtering tool at a specific location based on determined
information’ was a sufficient inventive concept.” Appeal Br. 14.
We do not agree. Contrary to Appellant’s arguments, there is no
evidence from the Specification to support any contention that Appellant’s
claims improve “surrounding systems, and modify[] and improve the
computing system of the enterprise itself.” Appeal Br. 16–17. Mere
attorney arguments and conclusory statements that are unsupported by
factual evidence are entitled to little probative value. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693, slip op. at 7–8
(BPAI Aug. 10, 2009) (informative). Likewise, utilizing generic computing
devices do not alone transform an otherwise abstract idea into patent-eligible
subject matter. As our reviewing court has observed, “after Alice, there can
remain no doubt: recitation of generic computer limitations does not make
an otherwise ineligible claim patent-eligible.” DDR, 773 F.3d at 1256
(citing Alice, 573 U.S. at 222).
Appellant’s claims are not analogous to the claims of the patent at
issue in BASCOM. For example, BASCOM (U.S. Patent No. 5,987,606
(“BASCOM ’606 patent”)) describes a particular arrangement of filtering
software at a specific location, remote from the end-users, with customizable
filtering features specific to each end user. The filtering software enables
individually customizable filtering at the remote ISP server by taking
advantage of the technical ability of the ISP server to identify individual
accounts and associate a request for Internet content with a specific
individual account. BASCOM ’606 patent, 4:35–38.
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The Federal Circuit recognized that BASCOM’S installation of an
Internet content filter at a particular network location is “a technical
improvement over prior art ways of filtering such content” because such an
arrangement advantageously allows the Internet content filter to have “both
the benefits of a filter on a local computer and the benefits of a filter on the
ISP server” and “give[s] users the ability to customize filtering for their
individual network accounts.” BASCOM, 827 F.3d at 1350, 1352.
According to the Federal Circuit, BASCOM’s claims “do not preempt the use
of the abstract idea of filtering content on the Internet or on generic
computer components performing conventional activities.” Id. at 1352.
Instead, BASCOM’S claims “carve out a specific location for the filtering
system (a remote ISP server) and require the filtering system to give users
the ability to customize filtering for their individual network accounts.” Id.
As such, “an inventive concept can be found in the non-conventional and
non-generic arrangement of known, conventional pieces.” Id. at 1350.
In contrast to BASCOM, Appellant’s claims and Specification
describe “how to better manage costs [associated with one or objects] in a
computer system” (Ans. 6) by simply collecting and comparing data
associated with the utilization of one or more objects with one or more rules
associated with the utilization of the one or more objects, as shown in Figure
4, and then providing an indication of the cost associated with the utilization
of the one or more objects based at least on the comparison. See Spec. 3:2–
19; Abstract. This way “the user may understand the cost associated with
the utilization of the objects.” Spec. 18:5–6. There is no evidence in the
record to support the contention that Appellant’s claimed system is provided
with any non-conventional and non-generic arrangement of known,
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conventional components similar to BASCOM. Likewise, there is no
element or combination of elements recited in Appellant’s claims 1–24, 26,
28, and 29 that contain any “inventive concept” or add anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. 208 at 221.
Lastly, Appellant argues that the claims “requiring a processor . . .
“cannot be ‘generic computer functions that are well-understood, routine and
conventional activities” because “the applied references and knowledge
generally available to those of ordinary skill in the art . . . are not sufficient
to support a prima facie case of obviousness with respect to each of Claims
1–24, 26, 28, and 29.” Appeal Br. 17. This argument improperly conflates
the test for § 101 with the separate tests for §§ 102 and 103. See Diamond v.
Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘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.”); see also Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (“under the Mayo/Alice
framework, a claim directed to a newly discovered law of nature (or natural
phenomenon or abstract idea) cannot rely on the novelty of that discovery
for the inventive concept necessary for patent eligibility”);. “The
inventiveness inquiry of § 101 should therefore not be confused with the
separate novelty inquiry of § 102 or the obviousness inquiry of § 103.”
Amdocs, 841 F.3d at 1311. It is not enough for subject-matter eligibility that
claimed techniques be novel and nonobvious in light of prior art, passing
muster under 35 U.S.C. §§ 102 and 103. See Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 89–90 (2012); Synopsys, Inc. v. Mentor
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Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new
abstract idea is still an abstract idea. The search for a § 101 inventive
concept is thus distinct from demonstrating § 102 novelty.”); Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016)
(same for obviousness) (“Symantec”). The claims here are ineligible
because their innovation is an innovation in ineligible subject matter. Their
subject matter is nothing but “to better manage costs in a computer system.”
Ans. 6; Spec. 2:1–5. An advance of that nature is ineligible for patenting.
Because Appellant’s independent claims 1, 10, and 19 are directed to
a patent-ineligible abstract concept and do not recite an “inventive concept”
or provide a solution to a technical problem under the second step of the
Alice analysis, we sustain the Examiner’s § 101 rejection of independent
claims 1, 10, and 19, and their dependent claims 2–9, 11–18, 20–24, 26, 28,
and 29 not separately argued.
35 U.S.C. § 103(a)
In support of the § 103(a) rejection of claims 1–24, 26, and 28, the
Examiner finds the combination of Depro, Alam, Childress, and Carmody
teaches or suggests all claim limitations. Final Act. 13–26. For example,
the Examiner finds Depro teaches most aspects of Appellant’s independent
claims 1, 10, and 19 including: (1) “determining . . . a plurality of rules using
the plurality of software licenses”; (2) “providing first instructions . . . to
monitor the utilization of the one or more objects;” (3) “receiving . . . data
associated with the utilization of the one or more objects;” and (4)
“comparing . . . data associated with the utilization of the one or more
objects with the plurality of rules from the plurality of software licenses.”
Final Act. 13–14 (citing Depro 1:38–2:8, 5:60–6:15, 7:5–65, 9:45–10:15).
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To support the conclusion of obviousness, the Examiner then relies on
(1) Alam for teaching “providing [] instructions . . . to adjust utilization of
the associated one or more objects . . . in accordance with the software
licenses”; (2) Childress for teaching “determining . . . hardware results in the
lowest utilization cost . . . based on the comparison”; and (3) Carmody for
teaching “discovering that a plurality of software licenses has been loaded
into a computing system.” Final Act. 14–18 (citing Alam ¶¶ 26–29;
Childress 3:5–10, 3:20–25, 8:11–9:50, 10:59–11:41; Carmody ¶¶ 123–125,
Fig. 2).
For the § 103 rejection of independent claims 1, 10, and 19, Appellant
does not contest the Examiner’s factual findings regarding Depro, Childress,
and Carmody, but disputes the Examiner’s factual finding regarding Alam.
In particular, Appellant acknowledges “Alam describes calculating cost
based off of, for example, sales promotions, and the usage of the resource
over a set time period,” but argues that “[c]alculating cost is not the same as
determining a software license from the plurality of software licenses based
on the comparison, as recited in Claim 1.” Appeal Br. 19–20 (citing Alam
¶¶ 24–29). In addition, Appellant argues Alam does not teach or suggest
“providing [] instructions . . . to adjust utilization of the associated one or
more objects, wherein adjusting utilization of the associated one or more
objects in accordance with the software license lowers utilization cost,” as
recited in claim 1. Appeal Br. 20–21. According to Appellant,
Alam teaches exactly what is in its disclosure – that adjustments
may be made to costs as a result of predetermined customer
agreements, sales promotions, and specials (not provide
instructions to the agents to adjust utilization). Alam, 41 [0026],
Alam gives the example of a sales promotion that gives a 50%
discount on disk storage charges when the disk usage exceed[s]
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20 GB, and states that the system may multiply the cost per
resource unit by 0.5 when it exceeds 20 GB. Id. This is entirely
different from the elements recited in Claim 1, which provide
instructions from the computing system to the agents to adjust
the actual utilization based on software licenses.

Appeal Br. 21. Lastly, Appellant argues “the Examiner’s attempt to modify
or combine Depro, Alam, Childress, and Carmody appears to constitute the
type of impermissible hindsight reconstruction of Appellant’s claims, using
Appellant’s claims as a blueprint.” Appeal Br. 22–23.
Appellant’s arguments are not persuasive. Instead, we find the
Examiner has provided a comprehensive response to Appellant’s arguments,
supported by evidence. Ans. 13–19. As such, we adopt the Examiner’s
findings and explanations provided therein, as discussed below. Id. For
example, we agree with the Examiner that Appellant’s claim 1 does not
recite “determining a software license from the plurality of software licenses
based on the comparison” (Appeal Br. 20 (emphasis omitted)), as argued by
Appellant. Ans. 13–14. Instead, claim 1 requires, in relevant part,
comparing utilization-related data regarding objects (e.g., software) with the
plurality of rules “from the plurality of software licenses,” and Depro (not
Alam) is relied upon for such limitation. Final Act. 14 (citing Depro 1:50–
2:8, 9:60–10:15). Moreover, as correctly recognized by the Examiner, Alam
teaches determining “the total usage cost for each resource (i.e., object)” and
allowing a customer to “adjust their usage or budget to accommodate their
needs” based on customer agreements (i.e., licenses). Ans. 15 (citing Alam
¶¶ 26–27). Likewise, Appellant’s hindsight argument is of no moment
where, as here, the Examiner provides a sufficient, non-hindsight reason to
combine the references. See In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir.
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2016); see also Final Act. 15–16 (motivation to combine the teachings of
Depro and Alam), 16–17 (motivation to combine the teachings of Childress
with Depro and Alam), 18 (motivation to combine the teachings of Carmody
with Depro, Alam, and Childress).
Claims 9, 18, and 26 depend from independent claims 1, 10, and 19,
via intervening claims 6, 15, and 24, respectively. For example, claim 9
further recites:
determining that the cost associated with the utilization of
the one or more objects exceeds a threshold;
in response to determining that the cost associated with the
utilization of the one or more objects exceeds the threshold,
alerting the system administrator; and
formatting for display, in near real time, a graph
comprising the indication of the cost associated with the
utilization of the one or more objects.

The Examiner finds Depro teaches the additional requirements of
claim 9. Final Act. 22–23 (citing Depro 2:10–30, 4:43–48, 4:65–5:5, 7:34–
65, Figs. 3, 5). Appellant argues “Depro only describes usage metering
technology that detects when usage exceeds a threshold, not when the cost
associated with the utilization exceeds a threshold.” Appeal Br. 18–19
(citing Depro 7:34–65). Appellant also argues “Depro merely describes
being able to create a report of the utilization data . . . which does not
include cost.” Appeal Br. 19.
We do not agree. As correctly recognized by the Examiner, “Depro
clearly teaches that determining ‘costs associated with utilization exceeds a
threshold’ because Depro charges additional fees, based on usage, beyond
what a customer purchased initially [from a pay-per-use license].” Ans. 12–
13 (citing Depro 1:9–30). Depro also teaches a usage report (i.e., a graph as
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shown in Figure 3) to show the cost associated with the utilization of one or
more objects. Depro 3:5–15, Fig. 3.
For these reasons, we are not persuaded of Examiner error.
Accordingly, we sustain the Examiner’s obviousness rejection based on
Depro, Alam, Childress, and Carmody of (1) independent claims 1, 10, and
19; (2) dependent claims 9, 18, and 26; and (3) other dependent claims 2–8,
11–17, 19–24, and 28, which Appellant does not argue separately. For the
same reasons, we also sustain the Examiner’s obviousness rejection of claim
29 based on Depro, Alam, Childress, Carmody, and Jacobs.

CONCLUSION
On the record before us, we conclude Appellant has not demonstrated
the Examiner erred in rejecting claims 1–24, 26, 28, and 29 under
35 U.S.C. § 101 and under 35 U.S.C. § 103(a). As such, we AFFIRM the
Examiner’s rejection of claims 1–24, 26, 28, and 29 under 35 U.S.C. § 101
and under 35 U.S.C. § 103(a).

CONCLUSION SUMMARY
Claims
Rejected
35 U.S.C.§  Basis Affirmed Reversed
1–24, 26, 28, 29 101  Non-Statutory 1–24, 26, 28,
29

1–24, 26, 28, 29 103  Obviousness 1–24, 26, 28,
29

Overall Outcome 1–24, 26, 28,
29

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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).

AFFIRMED