Vishwanath Bandoo. Pargaonkar et al.

Patent Trials and Appeals Board

Oct 11, 2019

13260293 - (D) (P.T.A.B. Oct. 11, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/260,293 09/24/2011 Vishwanath Bandoo Pargaonkar 82853812 6419
146568 7590 10/11/2019
MICRO FOCUS LLC
500 Westover Drive
#12603
Sanford, NC 27330
EXAMINER
SWARTZ, STEPHEN S
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
10/11/2019 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):
software.ip.mail@microfocus.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VISHWANATH BANDOO PARGAONKAR
and KRISHNA MAHADEVAN RAMAKRISHNAN
____________

Appeal 2018-005488
Application 13/260,293
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
MATTHEW S. MEYERS, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Vishwanath Bandoo Pargaonkar and Krishna Mahadevan
Ramakrishnan (Appellant2) seeks review under 35 U.S.C. § 134 of a final
rejection of claims 1–14 and 16–21, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellant invented a way of choosing the right solution for each
component in an IT infrastructure. Specification 1:16–19.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer–implemented method for automatically selecting
agent–based or agentless monitoring, the method comprising:
[1] determining by a processor,
using a business service topology in a configuration
management database,
whether a system is business critical or business non–
critical;
[2] selecting, by the processor,
between agent–based monitoring and agentless
monitoring

1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal
Br.,” filed November 27, 2017) and Reply Brief (“Reply Br.,” filed April 17,
2018), and the Examiner’s Answer (“Ans.,” mailed February 21, 2018), and
Final Action (“Final Act.,” mailed June 28, 2017).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as EntIT
Software LLC (Appeal Br. 2).

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based on a determination of whether the system is
business critical or business non–critical,
wherein a selection of agentless monitoring, and not
agent–based monitoring, is made in response to a
determination that the system is business non-critical,
and wherein a selection of agent–based monitoring, and
not agentless monitoring, is made in response to a
determination that the system is business critical.
The Examiner relies upon the following prior art:
Name Reference Date
Bonnell US 5,655,081 Aug. 5, 1997
Ladd US 7,266,726 B1 Sept. 4, 2007
Eichler US 8,185,550 B1 May 22, 2012
Diao US 2005/0049901 A1 Mar. 3, 2005
Baron US 2006/0064481 A1 Mar. 23, 2006
Claims 1–14 and 16–21 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 1 and 14 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Ladd.
Claims 2, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ladd and Diao.
Claims 3, 13, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ladd, Diao, and Baron.
Claims 4–10 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ladd, Diao, Baron, and Eichler.
Claims 17–19 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Ladd and Bonnell.
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ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of novelty and obviousness turn primarily on whether
Ladd describes the claim limitations.

FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of
“business service topology.”
02. The customary meaning of a business service topology is an
overview of the components from a business perspective as
opposed to a component inventory perspective.3
03. The disclosure contains no lexicographic definition of “agent
based monitoring” or “agentless monitoring.”
Facts Related to Appellant’s Disclosure
04. The business service topology is stored in the configuration
management database (CMDB). Spec. 7:4–5.
05. In the agent-based solution, a software module called agent is
installed on each IT system (for example, a server) to be
monitored. The agents are configured to collect performance

3 IBM, IBM Knowledge Center,
https://www.ibm.com/support/knowledgecenter/en/SSPLFC_7.2.0/UserGuid
e/c_cmdb_creatingbizappsservices.html
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metrics depending on the application and the hardware profile of
the IT system. Spec. 2:20–23.
06. Agentless technology allows monitoring and. management of
an IT environment remotely, over the network without having to
install agents on the components to be monitored. The agentless
solution involves monitoring an IT system remotely by collecting
data periodically using standard interfaces. Spec. 3:9–11
Facts Related to the Prior Art
Ladd
07. Ladd is directed to logging, analysis, and control of events
occurring on electronic devices used in the network during
operation of the software. Ladd 2:18–23.
ANALYSIS
Claims 1–14 and 16–21 rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more
STEP 14
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that

4 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019)
(“Revised Guidance”).
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claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that question, .
. . consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a 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.”
Alice Corp., Pty. Ltd. v CLS Bank Intl, 573 U.S. 208, 217–18 (2014)
(citations omitted) (citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first
determine what the claims are directed to. This begins by determining
whether the claims recite one of the judicial exceptions (a law of nature, a
natural phenomenon, or an abstract idea). Then, if claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception, i.e., that the claims “apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Revised Guidance at 54. If
the claims are directed to a judicial exception, then finally determining
whether the claims provide an inventive concept because the additional
elements recited in the claims provide significantly more than the recited
judicial exception.
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STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites determining whether a system is business critical or business
non–critical and selecting between agent-based monitoring and agentless
monitoring. Determining and selecting are both rudimentary forms of
generic analysis. Thus, claim 1 recites analyzing data. None of the
limitations recite technological implementation details for any of these steps,
but instead recite only results desired by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts5, (2) certain methods of organizing
human activity6, and (3) mental processes7. Among those certain methods of
organizing human activity listed in the Revised Guidance are concepts
performed in the human mind. Like those concepts, claim 1 recites the

5 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
6 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
7 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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concept of making a choice. Specifically, claim 1 recites operations that
would ordinarily take place in advising one to make a selection based on a
binary determination. The advice to make a selection based on a binary
determination involves deciding based on criteria, which is a mental act, and
making a selection based on the decision, which is another mental act. For
example, claim 1 recites “determining . . . whether,” which is an activity that
would take place whenever one is making a determination. Similarly, claim
1 recites “selecting . . . based on a determination,” which is also a mental
act.
The Examiner determines the claims to be directed to selecting agent-
based or agentless monitoring based on predefined characteristics. Final
Act. 9.
The preamble to claim 1 recites that it is a method for automatically
selecting agent-based or agentless monitoring. The steps in claim 1 result in
selecting agent-based or agentless monitoring absent any technological
mechanism other than a conventional computer for doing so. Claim 1
results in a selection, not the execution of the selections.
As to the specific limitations, limitation 1 recites making a binary
determination and limitation 2 recites making a selection based on that
choice. Binary choice and selection are both rudimentary forms of
conceptual analysis. The limitations thus recite advice for making a
selection based on a binary determination. To advocate making a selection
based on a binary determination is conceptual advice for results desired and
not technological operations.
The Specification at 1:16–19 describes the invention as relating to
choosing the right solution for each component in an IT infrastructure.
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Thus, all this intrinsic evidence shows that claim 1 is directed to making a
binary choice between agent and agentless monitoring, i.e. making a choice.
This is consistent with the Examiner’s determination.
This in turn is an example of concepts performed in the human mind
as mental processes because making a choice is a concept performed in the
human mind. The concept of making a choice by making a selection based
on a binary determination is one idea for making a selection. The steps
recited in claim 1 are part of how this might conceptually be premised.
The steps of analyzing data mimic human thought processes of
observation, evaluation, judgment, and opinion, perhaps with paper and
pencil, where the data interpretation is perceptible only in the human mind.
See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94
(Fed. Cir. 2016). Claim 1, unlike the claims found non-abstract in prior
cases, uses generic computer technology to perform data analysis and does
not recite an improvement to a particular computer technology. See, e.g.,
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314–15
(Fed. Cir. 2016) (finding claims not abstract because they “focused on a
specific asserted improvement in computer animation”). As such, claim 1 is
directed to analyzing data, and not a technological implementation or
application of that idea.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Content Extraction and
Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343, 1347 (2014)
(collecting, recognizing, and storing data); BASCOM Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1347 (Fed. Cir. 2016) (filtering
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content); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318 (Fed. Cir.2016) (screening content); FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093 (Fed. Cir. 2016) (collecting and analyzing
information).
From this we conclude that at least to this degree, claim 1 is directed
to making a choice by making a selection based on a binary determination,
which is a mental activity as a concept performed in the human mind
identified in the Revised Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application.8
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions ... embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.”
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of
such concepts “ ‘to a new and useful end,’ ” we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the “ ‘buildin[g] block[s]’ ” of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,

8 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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devoid of implementation details. Steps 1 and 2 recite generic computer
processing expressed in terms of results desired by any and all possible
means and so present no more than conceptual advice. All purported
inventive aspects reside in how the data is interpreted and the results desired,
and not in how the process physically enforces such a data interpretation or
in how the processing technologically achieves those results.
Viewed as a whole, Appellant’s claim 1 simply recites the concept of
making a choice by making a selection based on a binary determination as
performed by a generic computer. This is no more than conceptual advice
on the parameters for this concept and the generic computer processes
necessary to process those parameters, and do not recite any particular
implementation.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The 9 pages of specification do not bulge with
disclosure, but only spell out different generic equipment9 and parameters
that might be applied using this concept and the particular steps such
conventional processing would entail based on the concept of making a
choice by making a selection based on a binary determination under
different scenarios. They do not describe any particular improvement in the
manner a computer functions. Instead, claim 1 at issue amounts to nothing
significantly more than an instruction to apply making a choice by making a
selection based on a binary determination using some unspecified, generic
computer. Again, the claims stop at making a choice. The claims do not
execute the choice, much less recite a technological implementation for

9 The Specification describes a general purpose computer. Spec. 9.
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doing so. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the 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.
We conclude that claim 1 is directed to achieving the result of making
a choice by advising one to make a selection based on a binary
determination, as distinguished from a technological improvement for
achieving or applying that result. This amounts to mental processes, which
fall within concepts performed in the human mind that constitute abstract
ideas. The claim does not integrate the judicial exception into a practical
application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
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the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for analyzing data amounts to electronic data query and retrieval—
one of the most basic functions of a computer. All of these computer
functions are generic, routine, conventional computer activities that are
performed only for their conventional uses. See Elec. Power Grp. v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz Interactive
Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011)
(“Absent a possible narrower construction of the terms ‘processing,’
‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any
general purpose computer without special programming”). None of these
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activities are used in some unconventional manner nor do any produce some
unexpected result. Appellant does not contend it invented any of these
activities. In short, each step does no more than require a generic computer
to perform generic computer functions. As to the data operated upon, “even
if a process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
and analysis other than abstract.” SAP America, Inc. v. InvestPic LLC, 898
F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data analysis followed by more
analysis is equally generic and conventional. See Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting,
offering for exchange, display, allowing access, and receiving payment
recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.,
876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis,
modification, generation, display, and transmission), Two-Way Media Ltd. v.
Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir.
2017) (sequence of processing, routing, controlling, and monitoring).
Beyond that, determining the actual data representing criteria for selection
and then making the selection is the fundamental conventional search query
combination. The ordering of the steps is therefore ordinary and
conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
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REMAINING CLAIMS
Claim 1 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “warn[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the concept
performed in the human mind of making a choice by making a selection
based on a binary determination, without significantly more.
APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action 9–18 and Answer 10–19 and
reach similar legal conclusions. We now turn to the Reply Brief.
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We are not persuaded by Appellant’s argument that “the rejection
ignored the additional feature of determining whether a system is
business critical or business non-critical, and failed to establish that this
additional feature is merely a generic element that adds nothing to the
asserted abstract idea.” Reply Br. 9. Appellant contends the Examiner
determined that the attribute of being business critical is abstract and
therefore was another Alice step 1 test and not a step 2 test. Id. But the
nature of the data cannot confer eligibility. See SAP America, supra. The
claim recites no technological implementation for determining that a system
is business-critical, only that the data representing the system is in a
database. The attribute of existence, or even membership, is too
conventional to be considered an inventive additional feature.
We are not persuaded by Appellant’s argument that the claims are
analogous to those in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). Reply Br. 10. The claims differ from those found patent
eligible in Enfish, where the claims were “specifically directed to a self-
referential table for a computer database.” 822 F.3d 1327, 1337 (Fed. Cir.
2016). The claims thus were “directed to a specific improvement to the
way computers operate” rather than an abstract idea implemented on a
computer. Id. at 1336. Here, by contrast, the claims are not directed to
an improvement in the way computers operate. Though the claims
purport to accelerate the process of making a selection, our reviewing court
has held that speed and accuracy increases stemming from the ordinary
capabilities of a general purpose computer “do[] not materially alter the
patent eligibility of the claimed subject matter.” Bancorp Servs., L.L.C. v.
Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir.
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2012). Instead, the claims are more analogous to those in FairWarning,
839 F.3d 1089 (Fed. Cir. 2016), wherein claims reciting “a few possible
rules to analyze audit log data” were found directed an abstract idea
because they asked “the same questions (though perhaps phrased with
different words) that humans in analogous situations detecting fraud have
asked for decades.” 839 F.3d at 1094, 1095.
We are not persuaded by Appellant’s argument that “the assertion that
the claimed invention is similar to EPG because it ‘displays certain results
of the collection and analysis’ is false. Therefore, the aforementioned
argument of the Answer regarding EPG is clearly erroneous.” Reply Br. 11.
Appellant contends that the instant claims do less than those in Electric
Power Group LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) in that the
claims herein do not print. Appellant does not contend that any of the
recited operations are not in Electric Power. If a set is abstract, a subset of
that is logically abstract.
We are not persuaded by Appellant’s argument that “the embodiments
described above ~ solution deployment time by automating the decision
making process.” Reply Br. 12 (citing Specification para. 33). Similarly,
we are not persuaded by Appellant’s argument that the Specification
describes that this computer-based technique improves this selection. Reply
Br. 13. As the Bancorp Servs, supra decision holds, improved speed and
accuracy do not confer eligibility.
Appellant also attempts to analogize the claims to those involved in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016). Reply Br. 13–14. In McRO, the court held that, although the
processes were previously performed by humans, “the traditional process
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and newly claimed method . . . produced . . . results in fundamentally
different ways.” FairWarning v. Iatric Systems, 839 F.3d 1089, 1094
(Fed. Cir. 2016) (differentiating the claims at issue from those in McRO).
In McRO, “it [ was] the incorporation of the claimed rules not the use of
the computer, that improved the existing technology process,” because
the prior process performed by humans “was driven by subjective
determinations rather than specific, limited mathematical rules.” 837 F.3d
at 1314 (internal quotation marks, citation, and alterations omitted). In
contrast, the claims of the instant application merely implement an old
practice of using decision criteria in making decisions in a new environment.
Appellant has not argued that the claimed processes of selecting methods
apply rules of selection in a manner technologically different from those
which humans used, albeit with less efficiency, before the invention was
claimed. Merely pigeon holing the objects of decision making in tiers to aid
decision making is both old and itself abstract.
The claims in McRO were not directed to an abstract idea, but
instead were directed to “a specific asserted improvement in
computer animation, i.e., the automatic use of rules of a
particular type.” We explained that “the claimed improvement
[was] allowing computers to produce ‘accurate and realistic lip
synchronization and facial expressions in animated characters’
that previously could only be produced by human animators.”
The claimed rules in McRO transformed a traditionally
subjective process performed by human artists into a
mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094.
Appellant further argues that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.
773 F.3d 1245 (Fed. Cir. 2014). Reply Br. 15. In DDR Holdings, the
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Court evaluated the eligibility of claims “address[ing] the problem of
retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly
transported away from a host’s website after ‘clicking’ on an
advertisement and activating a hyperlink.” Id. at 1257. There, the Court
found that the claims were patent eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem
that had no “pre-Internet analog.” Id. at 1258. The Court cautioned,
however, “that not all claims purporting to address Internet-centric
challenges are eligible for patent.” Id. For example, in DDR Holdings
the Court distinguished the patent-eligible claims at issue from claims
found patent-ineligible in Ultramercial. See id. at 1258–59 (citing
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 7 0 9 , 715–16 (Fed. Cir. 2014)).
As noted there, the Ultramercial claims were “directed to a specific
method of advertising and content distribution that was previously
unknown and never employed on the Internet before.” Id. at 1258
(quoting Ultramercial, 772 F.3d at 715–16). Nevertheless, those claims
were patent ineligible because they “merely recite[d] the abstract idea of
‘offering media content in exchange for viewing an advertisement,’ along
with ‘routine additional steps such as updating an activity log, requiring a
request from the consumer to view the ad, restrictions on public access, and
use of the Internet.’” Id.
Appellant’s asserted claims are analogous to claims found ineligible
in Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website;” “restricting general public access to said
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media product;” “receiving from the consumer a request to view [a]
sponsor message;” and “if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query.” 772 F.3d at 712. Similarly, Appellant’s asserted claims recite
generic data analysis. This is precisely the type of Internet activity found
ineligible in Ultramercial.
We are not persuaded by Appellant’s argument that “[i]n the Appeal
Brief, Appellant argued that the claimed solution uses ‘a business service
topology stored in a configuration management database,’ and thus is not
merely implemented on a generic computer.” Reply Br. 15. As footnote 9
supra indicates, the Specification states the invention may be implemented
on a general purpose computer.
We are not persuaded by Appellant’s argument that “the Answer fails
to provide any evidence or reasoning to establish that using a business
service topology stored in a configuration management database is merely
an implementation of the asserted abstract idea on a generic computer.”
Reply Br. 16. A business service topology is an overview of the components
from a business perspective as opposed to a component inventory
perspective. FF 02. If the nature of the data cannot confer eligibility, (see
SAP America, supra.), the nature of the data being that of an overview of
something is even less able to confer eligibility. At bottom, the limitation
merely instantiates the value of criteria used to make a decision. The value
of a decision criterion is itself, just a mental concept.
Claims 1 and 14 rejected under 35 U.S.C. § 102(b) as anticipated by Ladd
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We are persuaded by Appellant’s argument that Ladd “fails to
disclose ‘a business service topology stored in the configuration
management database.’” Appeal Br. 6–7. The Examiner responds that
Ladd describes “head-end components and services, which is viewed as []a
topology of the network such that the IT network can be configured and
managed, which is in-line with the generic definition of a business network
topology.” Ans. 7. Examiner apparently equates a network topology with a
business services topology. A business service topology is an overview of
the components from a business perspective as opposed to a component
inventory perspective. FF 02. Ladd does not describe this.
Claims 2, 11, and 12 rejected under 35 U.S.C. § 103(a) as unpatentable over
Ladd and Diao
These depend from the independent claims, and so the arguments are
equally persuasive here.
Claims 3, 13, 20, and 21 rejected under 35 U.S.C. § 103(a) as unpatentable
over Ladd, Diao, and Baron
These depend from the independent claims, and so the arguments are
equally persuasive here.
Claims 4–10 and 16 rejected under 35 U.S.C. § 103(a) as unpatentable over
Ladd, Diao, Baron, and Eichler
These depend from the independent claims, and so the arguments are
equally persuasive here.
Claims 17–19 rejected under 35 U.S.C. § 103(a) as unpatentable over Ladd
and Bonnell
These depend from the independent claims, and so the arguments are
equally persuasive here.
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CONCLUSIONS OF LAW
The rejection of claims 1–14 and 16–21 under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more is proper.
The rejection of claims 1 and 14 under 35 U.S.C. § 102(b) as
anticipated by Ladd is improper.
The rejection of claims 2, 11, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Ladd and Diao is improper.
The rejection of claims 3, 13, 20, and 21 under 35 U.S.C. § 103(a) as
unpatentable over Ladd, Diao, and Baron is improper.
The rejection of claims 4–10 and 16 under 35 U.S.C. § 103(a) as
unpatentable over Ladd, Diao, Baron, and Eichler is improper.
The rejection of claims 17–19 under 35 U.S.C. § 103(a) as
unpatentable over Ladd and Bonnell is improper.
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CONCLUSION
The rejection of claims 1–14 and 16–21 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
1–14, 16–21 101 Eligibility 1–14, 16–21
1–14, 16–21 102(b) Ladd  1–14, 16–21
2, 11, 12 103 Ladd, Diao  2, 11, 12
3, 13, 20, 21 103 Ladd, Diao,
Baron 
2, 11, 12
4–10, 16 103 Ladd, Diao,
Baron, Eichler 
4–10, 16
17–19 103 Ladd, Bonnell  17–19
Overall
Outcome
1–14, 16–21

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED