Wallace, Darius et al.

Patent Trials and Appeals Board

Apr 10, 2020

12650302 - (D) (P.T.A.B. Apr. 10, 2020)

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.
12/650,302 12/30/2009 Darius Wallace 0081-167001/08-032-US 7039
93236 7590 04/10/2020
Brake Hughes Bellermann LLP
c/o CPA Global
900 Second Avenue South
Suite 600
Minneapolis, MN 55402
EXAMINER
ROJAS, HAJIME S
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
04/10/2020 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):
docketing@brakehughes.com
uspto@brakehughes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DARIUS WALLACE, TROY LEE CLINE, and
MATTHEW DENNIS CONNORS
__________

Appeal 2019-002815
Application 12/650,3021
Technology Center 3600
__________

Before JEFFREY N. FREDMAN, RACHEL H. TOWNSEND, and
MICHAEL A. VALEK, Administrative Patent Judges.

TOWNSEND, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
for providing a service model, which have been rejected as directed to patent
ineligible subject matter, failing to comply with the written description
requirement, indefinite, and as being obvious. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as BMC.
(Appeal Br. 1.)
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STATEMENT OF THE CASE
“Business Service Management . . . is a dynamic Information
Technology . . . management strategy.” (Spec. ¶ 2.) “Modeling business
services is one way to organize resources, determine impact relationships
between resources, manage how and when resources are used, to track the
use of resources, etc.” (Id. ¶ 3.) “The resources of the business service can
include management processes, hardware, software, facilities, people, etc.”
(Id.) Business Service Management “methodologies . . . enable IT staff to
understand and predict how technology changes may affect the business and
how changes in the business may affect the IT infrastructure.” (Id. ¶ 2.)
Appellant’s invention “relates[] to a system and method that uses a
unified service model to manage business and technical services in a
computing infrastructure.” (Id. ¶ 6.) The “model . . . establishes a common
structure that provides a holistic view of services provided by a service
provider to a business enterprise.” (Id. ¶ 12.) “This structure acts as a single
source of service definitions across IT processes.” (Id.) The structure of the
model “help[s] users create, manage, and monitor the business services . . .
on the IT infrastructure . . . effectively and with more flexibility than
currently available.” (Id. ¶ 28.)
Claims 1–5, 7–13, 15, 16, and 27–29 are on appeal. Claim 1 is
representative, reproduced below, reformatted for clarity, and with bracketed
letters added:
1. A method for providing a service model in a Business
Service Management computing infrastructure, the method
comprising:
[A] generating a plurality of technical services each
configured to implement at least one first component of a
physical infrastructure, the plurality of technical services
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including at least one first offering configured to provide utility
for one of the plurality of technical services,
the at least one first offering including a plurality
of first service level targets used to measure a
performance of the at least one first offering;
[B] generating a plurality of business services each
configured to provide a Business Service Management
function, the plurality of business services including at least one
second offering configured to provide utility for one of the
plurality of business services,
the at least one second offering being configured to
use one or more of the plurality of technical services,
the at least one second offering including a
plurality of second service level targets used to measure a
performance of the at least one second offering;
[C] generating a plurality of contracts each including at
least one contract-item,
the at least one contract-item being associated
with a customer, the
the at least one contract-item being associated
with one of the at least one offering; and
[D] generating the service model using a second
component of the physical infrastructure, the service model
including the plurality of technical services, the plurality of
business services, and the plurality of contracts; and
[E] managing the business service, the plurality of
technical services, and the at least one first component in the
physical infrastructure for the customer by using the at least one
first offering, the at least one second offering, the plurality of
first service level targets and the plurality of second service
level targets.
(Appeal Br. 40 (bracketed letters added).)

The prior art relied upon by the Examiner is:
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Name Reference Date
Lewis US 8,073,721 B1 Dec. 6, 2011
Lymbery US 2010/0169225 A1 July 1, 2010

The following grounds of rejection by the Examiner are before us on
review:
Claims 1–5, 7–13, 15, 16, and 27–29 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
Claims 1–5, 7–13, 15, 16, and 27–29 under 35 U.S.C. § 112, first
paragraph, for lack of an adequate written description.
Claims 1–5, 7–13, 15, 16, and 27–29 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1–5, 7–13, 15, 16, and 27–29 under 35 U.S.C. § 103(a) as
unpatentable over Lewis and Lymbery.
DISCUSSION
I
Patent-Ineligible Subject Matter
The Dispute
The Examiner finds that the series of steps of the claims provide for
“instructing how to implement a framework for IT Service Management”
which is a method of organizing human activity, and that at least one
individual step, i.e., step [C], recites a fundamental economic practice and/or
a type of commercial or legal interaction, namely “defining a contract.”
(Final Action 2, 5; Ans. 4–5, 6.) The Examiner finds that step [D] is
considered a business relation, and thus is a commercial interaction. (Ans.
6.) And, the Examiner explains that the final step [E] “covers managing
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interactions between people, for example, a manager requiring his/her staff
to implement the various services/offerings for a customer by using service
level target parameters, which can be mentally observed by the manager,
from the first and second offerings.” (Id.)
The Examiner also finds “claim 1 does not even recite a computer
element performing the methods steps, and could be interpreted as being
performed mentally or by a human using pen and paper.” (Final Action 6;
Ans 5.) The Examiner explains, in any event, that the first two generating
steps ([A] and [B], above) could be performed by a human determining in
their mind, which technical and business services are configured to meet
specific criteria. (Ans. 5 “(the first two generating steps simply involve a
human thinking about what type and level of service a business needs, and
which computer infrastructures and locations are capable of providing such
service.”).) The Examiner notes that the fourth generating step, i.e., step
[D], above, “simply requires that a human, after having thought of or
generated the business services and technical services as stated above,
generate a model in their mind which includes the business services,
technical services and contracts.” (Ans. 6.)
In light of the foregoing, the Examiner concludes that the claims are
directed to an abstract idea, which is a judicial exception. (Final Action 5;
Ans. 4–6.)
Additionally, the Examiner finds that the limitations that are not part
of the judicial exception, when considered alone, and in combination, do not
result in a claim that amounts to significantly more than the judicial
exception. (Final Action 2, 5–6.) In particular, the Examiner notes that
claims 1 and 29 recites generic “computer elements (e.g. computing
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infrastructure, components of a physical infrastructure, non-transitory
programmable storage device programmable control device, etc.)” that
perform well-understood, routine, and conventional functions to the extent
the claim even requires the computer element to perform a function. (Id. at
2, 6; Ans. 7.) The Examiner notes also that claim 1 also recited the
additional element of “using a second component of the physical
infrastructure.” (Ans. 9.)
The Examiner further explains the additional elements (1) “do not
reflect an improvement in the functioning of a computer, or an improvement
to other technology or technical field” (Ans. 7), (2) do not implement the
judicial exception with, or use a judicial exception in conjunction with, a
particular machine or manufacture that is integral to the claim (noting, in
particular, the Specification at paragraphs 77 and 78, which state the
methods “can be implemented in digital electronic circuitry, in computer
hardware, firmware, software, or in combinations of these” and that general
and special purpose microprocessors are suitable); (3) do not effect a
transformation or reduction of a particular article to a different state or thing,
and (4) they “merely link the use of the abstract idea to a particular
technological environment (i.e., ‘implementation via computers’).” (Ans. 8–
9 (emphasis omitted).) In particular, the Examiner notes that “using a
generic computer component cannot provide an inventive concept.” (Id. at
10.) The Examiner explains with respect to claim 1, “the additional element
of using a physical infrastructure element to perform the fourth ‘generating’
step amounts to no more than mere instructions to apply the exception using
a generic computer component.” (Id.) The Examiner further explains with
respect to claim 29 that the non-transitory programmable storage device
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having programmed instructions stored thereon for causing a programmable
control device to implement functions similar to the steps in claim 1 is
“interpreted as a generic computer element” and like claim 1, “amount[s] to
no more than mere instructions to apply the exception using a generic
computer component.” (Id.) In light of the foregoing, the Examiner
concludes that the additional elements of the claims “do not impose any
meaningful limits on practicing the abstract idea” (id.), and therefore, the
judicial exception recited in the claims “is not integrated into a practical
application” (id. at 9).
Appellant argues2 that the Examiner’s rejection is in error because the
first two generating steps “can not be performed in the human mind,” as,
“[f]or example, the first ‘generating’ step of Claim 1 explicitly calls for
implementing at least one first component of a physical infrastructure.”
(Reply Br. 4–5 (emphasis omitted).) According to Appellant, such a step, if
performed in the mind, “would require IT components or resources to be
installed in the human mind.” (Id.) Appellant further argues that because
these steps cannot be performed in the mind, the Examiner has improperly
evaluated the claims to assess whether the recited judicial exceptions, if any,
are integrated in a practical application. (Id. at 5.) Appellant contends that

2 Appellant’s additional argument that the Examiner’s Answer should have
designated a new ground of rejection because the thrust of the § 101
rejection has changed and Appellant has not had a fair opportunity to react to
it is a petitionable issue for the Director’s consideration not an appealable
issue for review by the Board. 37 C.F.R. § 41.40(a) (2017). The time for
petition has passed. Id. (the petition to challenge an examiner’s failure to
designate a rejection as a new ground must be “filed within two months from
the entry of the examiner’s answer and before the filing of any reply brief.”).
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“the claims at issue relate to providing services by utilizing components of
an IT infrastructure (i.e., a practical application).” (Id. at 6.)
The Analysis
The Supreme Court has established a two-step framework for
“distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217
(2014). “First, we determine whether the claims at issue are directed to” a
patent-ineligible concept. Id. If so, “we 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.” Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 78–79 (2012)).
Applying the 2019 Revised Patent Subject Matter Eligibility Guidance
(“Guidance”), 84 Fed. Reg. 50–57 (Jan. 7, 2019),3 we agree with the
Examiner’s conclusion that the claims are addressed to ineligible subject
matter. We address representative claim 1. We note that although claim 29
claims a non-transitory programmable storage device, the device requires
“programmed instructions stored thereon for causing a programmable
control device to” carry out the method steps that are recited in claim 1.

3 “All USPTO personnel are, as a matter of internal agency management,
expected to follow the guidance.” Id. at 51; see also USPTO, October 2019
Update: Subject Matter Eligibility 1 (the “October 2019 Update”) (available
at https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_
update.pdf).
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STEP 2A, Prong One:
Under the Guidance, in determining what concept a claim is “directed
to” in step one of the Supreme Court’s two-step framework, we first look to
whether the claim recites any judicial exceptions, such as (a) mathematical
concepts, (b) methods of organizing human activity including managing
personal behavior or interactions between people, and/or (c) mental
processes including an observation, evaluation, judgment, or opinion.
Guidance, 84 Fed. Reg. at 52, 54 (Step 2A, Prong One).
Appellant’s Specification indicates that the invention is a model to
“help an IT service provider offer, manage, and track the services it provides
for customers.” (Spec. ¶ 6.) This “model” is an organizational tool to solve
a business concern for businesses that offer computer infrastructure. The
business concern is identified in the Specification as follows: “[c]urrent
approaches for service modeling . . . make it difficult for service providers to
tailor and manage services to meet customer’s needs while still being able to
control costs.” (Id. ¶ 4.)
The Specification explains that the “model . . . establishes a common
structure that provides a holistic view of the services provided by a service
provider to a business enterprise . . . [which] structure acts as a single source
of service definitions across IT processes and can be leveraged consistently
by other software applications used to manage the IT processes.” (Id. ¶ 12.)
In short, all the information about services the business provides and
infrastructure the business uses to provide those services are itemized and
stored in a single place for access by all in the business who find themselves
in need of such access, i.e., a central file repository. (See, e.g., Spec. ¶ 22
(noting that a database (the CMDB) “stores data for the unified service
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model 140 by holding and organizing information for various defined
classes, including business services, persons, organizations, service
offerings, etc.”); id. ¶ 23 (“Various APIs enable users (e.g., an administrator
of service provider 30) [to] interface with the CMDB 110 so the users can
manage the business services 10 and the IT infrastructure 20.”); id. ¶ 63.)
The Specification further explains that the model proposed allows the
business using the model to create “multiple combinations of a primary
service (utility) with varying types of service level targets (warranty),”
which combinations are known as “service offerings.” (Id. ¶¶ 7–8.) By
“[u]sing these service offerings, the service provider can offer different
levels of the same service at different price points to different customers”
(id. ¶ 7), and such use “enables a service provider to better align business
and technical services to a customer’s business needs” (id. ¶ 9). In addition,
the Specification explains that the model allows the business using the
model to “associate particular customers with a provided service under a
contract” and thus the “model can produce an accurate picture of which
customer is using a particular service and when that use is to begin or
expire.” (Id. ¶ 11.) Here, the Specification describes that, not only is the
information about the services and infrastructure that provides such services
stored in the central repository for access by those in need of access, but the
various warranties that the business is able to offer (or does offer) for each
such service are also stored here, as well as the information as to each
particular contracted for service with respect to each customer. (See, e.g.,
Spec. ¶¶ 65–66, 74–76.)
Claim 1 is the method that a business involved in providing
computing infrastructure uses to set up this organizational tool. As the
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preamble recites it is “[a] method for providing a service model.” We
address the series of steps required by the claim below.
As the Examiner noted, this claim “does not even recite a computer
element performing the method steps.” (Final Action 6.) Thus, each of the
recited steps recited can be performed by a person using their minds and/or
by pen and paper. A claim recites a mental process when the claim
encompasses acts people can perform using their minds or pen and paper.
See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–
73 (Fed. Cir. 2011) (determining that a claim whose “steps can be performed
in the human mind, or by a human using a pen and paper” is directed to an
unpatentable mental process) see also Guidance, 84 Fed. Reg. at 52 n.14 (“If
a claim, under its broadest reasonable interpretation, covers performance in
the mind but for the recitation of generic computer components, then it is
still in the mental processes category unless the claim cannot practically be
performed in the mind.”). Even, if it were determined that the steps recited
the use of a computer element (e.g., the step of generating the service model
using a second component of the physical infrastructure) such would not
change our conclusion that the steps recite a mental process. See, e.g.,
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir.
2015) (“Courts have examined claims that required the use of a computer
and still found that the underlying, patent-ineligible invention could be
performed via pen and paper or in a person’s mind.”).
We agree with the Examiner that the first two “generating” steps are
steps that can be performed in the mind. In fact, we also note that a person
may actually make a list of these services using pen and paper.
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We do not find Appellant’s argument that these steps cannot be
performed in the mind (Reply Br. 4–5) persuasive. We disagree with
Appellant’s premise that the first generating step “explicitly calls for
implementing at least one first component of a physical infrastructure” (id.
at 5). The first generating step has no such explicit requirement. That
limitation recites, simply, generating technical services. Each such service is
“configured to implement at least one first component of a physical
infrastructure” and those services are to include an offering, defined in the
Specification as the combination of a service and a service warranty (also
called a service level target) (Spec. ¶ 8), where more than one warranty is
associated with each service. That the service is configured to implement
something is not the same thing as the claim requiring implementation. All
that is required by being “configured to” is that the service (that is
“generated”) is specifically designed to accomplish the function recited. Cf.
Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d. 1335, 1349 (Fed.
Cir. 2012) (construing the phrase “configured to” in a device claim and
noting that it is construed more narrowly than “capable of” such that the
structure must be designed to accomplish the specified objective, not simply
that it can be made to serve that purpose.)
The second generating step concerns generating business services.
Each such service is “configured to provide a Business Service Management
function,” which is defined in the Specification to be a function that links
business services to IT components or resources of IT infrastructure. (See
Spec. ¶ 20.) For the same reasons discussed above, we conclude that this
step does not require any implementing of the management function.
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We also disagree with Appellant’s argument that either generating
step, if performed in the mind, “would require IT components or resources
to be installed in the human mind” (Reply Br. 5.) As the Examiner
explained, the first generating step encompasses a person involved with the
business considering what technical services and warranties can be provided
to customers or are provided to customers and simply generating a list of
such services in their mind. (Ans. 5.) Indeed, as the Examiner noted, the
Specification does not require the services to be physically created, but
simply to be defined. (Id.; Spec. ¶ 6 (“The service provider defines services
(service utility) and service level targets (service warranty) to construct a
unified service model that aligns the provider’s services to customers’
business needs.”).)
Similarly, the second generating step encompasses a person involved
with the business considering what business services can be associated with
what technical services and what warranties can be provided for that
business service and generating a list of such services in their mind, which
again, may or may not be written down. (Ans. 5.) Thus, we agree with the
Examiner that “the first two generating steps simply involve a human
thinking about what type and level of service a business needs, and which
computer infrastructures and locations are capable of providing such
service” it plans to offer along with the various warranties (i.e., service level
targets) it plans to offer with these services. (Id.)
The third generating step [C], which requires generating a plurality of
contracts that relate a customer to a business offering, is a step that can be
performed with a pen and paper. Additionally, this step is properly
categorized as a method of organizing human activity, just as the Examiner
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noted. (Ans. 6; see also Final Action 2, 5.) It involves setting forth the
commercial obligations of the business to its customers. Guidance, 84 Fed.
Reg. at 52; buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) (holding that concept of “creating a contractual relationship—a
‘transaction performance guaranty’” is an abstract idea).
We also agree with the Examiner that the fourth generating step, [D]
above, is a step that can be performed in the mind. (Ans. 6.) As the
Examiner aptly noted, this step “simply requires that a human, after having
thought of or generated the business services and technical services as stated
above, generate a model in their mind.” (Id.) As the Specification makes
clear, the “model” is simply the recipe a business uses to manage its
interactions with its customers taking into consideration the contracted for
services (including the infrastructure required to implement those services)
and warranties. (Spec. ¶¶ 4, 6, 9.) In this regard, this step may also be
considered a step that manages interactions between people. Thus, for this
additional reason we find this step to properly be characterized as a method
of organizing human activity.
The final step of the method, [E], which is “managing” services and
infrastructure required by the service for the customer by considering the
services offered and the warranties accompanying those offered services, as
the Examiner explained, is also a method of organizing human behavior
because it covers managing interactions between people. (Ans. 6.)
In light of the above, we conclude that claim 1 recites mental
processes and methods of organizing human behavior which are abstract
ideas, and thus, we proceed to the next step of the eligibility analysis.
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STEP 2A, Prong Two:
In the Prong Two analysis, we examine whether there are additional
elements beyond the judicial exception that integrate it into a practical
application. That is we look to the claim to see if there are additional
elements that “apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception.” Guidance, 84 Fed.
Reg. at 54.
The Examiner considered that the “second component of the physical
infrastructure” is an additional element beyond the judicial exception. (Ans.
7; see also Ans. 6 (noting that the step [D] generating step can be performed
in the mind “but for the recitation of a second component of the physical
infrastructure which is interpreted as merely a generic computer
component”).) We agree. The Specification states “[u]sing the available
interface components, the user can create and maintain the unified service
model 140 used to manage the business services 10 on the IT infrastructure
20.” (Spec. ¶ 25.) These interface components are described at a high level
of generality and are considered a generic computer component. Indeed, the
Specification describes the infrastructure elements used in a business
services involving IT components to be “general-purpose computers,
mainframe computers, servers, data storage systems, switches, terminals,
routers, computer networks, applications, software, etc.” (Spec. ¶ 21.) One
of the examples in which a judicial exception has been found not to be
integrated into a practical application is when “[a]n additional element . . .
merely includes instructions to implement an abstract idea on a computer, or
merely uses a computer as a tool to perform an abstract idea.” Guidance, 84
Fed. Reg. at 55. Thus, even acknowledging this claim element to be an
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additional limitation, it is not sufficient to integrate the claim into a practical
application.
Moreover, we agree with the Examiner that, even with respect to
claim 29, which recites, in the preamble, a “non-transitory programmable
storage device having programmed instructions stored thereon,” that there is
also not an additional element that integrates the claim into a practical
application. The non-transitory programmable device is simply a generic
computer element. We find no indication in the Specification, nor does
Appellant direct us to any indication therein, that the operations recited in
independent claim 1 (or claim 29) require any specialized computer
hardware or software or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”). To the contrary, as the Examiner noted:
The last paragraphs of the Specification describe the types of
hardware/software used to implement these concepts.
However, the hardware/software is described in a generic
manner, these components are not described as particular
machines.
(Ans. 8.) These paragraphs state that the “method steps of the disclosed
techniques can be performed by a programmable processor executing a
program of instructions to perform functions of the disclosed techniques by
operating on input data and generating output.” (Spec. ¶ 77.) The
Specification further explains that “[s]uitable processors include, by way of
example, both general and special purpose microprocessors.” (Id. ¶ 78.)
And finally, regarding the non-transitory programmable device of claim 29,
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the Specification explains that “[s]torage devices suitable for tangibly
embodying computer program instructions and data can include all forms of
non-volatile memory, including by way of example semiconductor memory
devices, such as EPROM, EEPROM, and flash memory devices; magnetic
disks such as internal hard disks and removable disks; magneto-optical
disks; and CD-ROM disks.” (Id. ¶ 79.)
Appellant argues that claims 1 and 29 improve computer functionality
and/or an existing technological process. (Appeal Br. 9–15.) We disagree.
Appellant does not explain what computer functionality is improved.
Rather, Appellant explains that the claimed improvement is the “unified
service model that uses a class structure that defines technical and business
services” (Appeal Br. 12–13, 15), which is the judicial exception itself. It is
the model that allows the service provider to be able to “create unique
service offerings” whereby it “can offer different levels of the same service
at different price points to different customers.” (Appeal Br. 11–12.)
Appellant explains that the model solves “the difficult prior techniques used
by service providers when attempting to tailor and manage services to meet
customers’ needs while still being able to control costs.” (Appeal Br. 12.)
As Appellant’s argument makes manifest, the claim does not provide a
technical solution to a technical problem, but a business solution to a
business problem.
The claim does not recite any specific asserted improvement to
computer technology. That the model ties “the IT infrastructure to
representations of business services,” uses the “service model in a Business
Service Management computing infrastructure,” and “manag[es] the
elements defined within the service model” (Appeal Br. 11) does not
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describe an improvement to computer technology, but rather, explains that
the judicial exception is applied in a specific technical field. In sum, claim 1
“do[es] not improve the functioning of the computer, make it operate more
efficiently, or solve any technological problem” Trading Techs. Int’l, Inc. v.
IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019), nor does claim 29.
We are not persuaded that there is any parallel between claim 1 (or
29) and the patent eligible claims in McRO, Inc. v. Bandai Namco Games
America, Inc., 837 F.3d 1299 (Fed. Cir. 2016) or Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016). (Appeal Br. 10, 14–16.) In McRO, a
technological process—computer animation—was improved. It was not just
automating a process that had previously been effected manually, but an
improvement in “how the physical display operated (to produce better
quality images).” SAP Am., Inc. v. Investpic, LLC, 898 F.3d 1161, 1167
(Fed. Cir. 2018) (contrasting the claims at issue in SAP with those in
McRO); see also Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 1167 (Fed.
Cir. 2019) (noting that in McRO, the claims were “‘limited to rules with
specific characteristics’ to create a technical effect.”).
Prior to the McRO invention, part of the prior art process was carried
out manually. McRO, 837 F.3d. at 1305 (noting that animators set
appropriate parameters at certain time points to achieve synchronization of
lip and visual expressions). The patent-eligible claims recited a process of
automated synchronization resulting from a specific order of rules as sub-
sequences of phonemes, timing, and weight of visual expression at a
particular timing by a morph weight set. Id. at 1315. The rules in McRO,
thus, allowed the computer to produce accurate and realistic synchronization
in animated characters in a physical display that could only previously be
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produced by humans. Unlike the claims in McRO, the claims here do not
recite rules that allow for a computer to act in a way that it could not before
without human interaction.
Furthermore, there is a fundamental difference between computer
functionality improvements, on the one hand, and uses of existing computers
as tools to perform a particular task, on the other. In Enfish, the claims at
issue focused on a specific type of data structure, i.e., the self-referential
table, designed to improve the way a computer stores and retrieves data in
memory, and not merely on asserted advances in uses to which existing
computer capabilities could be put. See Enfish, 822 F.3d at 1335–36. There
is no evidence of record that the claimed method uses a data structure, like
the self-referential table in Enfish, to improve a computer’s functionality or
efficiency, or otherwise change the way the computer operates.4
Whether or not “prior techniques used by service providers when
attempting to tailor and manage services to meet customers’ needs” may
have made it difficult to manage customers’ needs while still being able to
control costs (Appeal Br. 12), Appellant’s claimed steps are recited at a very
high level of abstraction, and are wholly unlike the claims found patent-
eligible in McRO and Enfish.

4 Appellant’s reliance on Research Corp. Techs. Inc. v. Microsoft Corp.,
627 F.3d 859 (Fed. Cir. 2010) (Appeal Br. 16) also is unpersuasive. In
Research Corp., the claims recited methods for halftoning gray scale images
using a pixel-by-pixel comparison of the image against a blue noise mask to
produce dot profiles thresholded at any level of gray scale images. Research
Corp., 627 F.3d at 865. The claims thus recited functional improvements in
computer technology for halftoning. Id. at 868–69. Here, as discussed, the
claims do not recite any steps that result in computer improvements.
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Furthermore, we disagree with Appellant’s apparent argument that
because IT infrastructure is involved in the claims, they necessarily integrate
the judicial exception into a practical application. (Reply Br. 6.) In none of
the claim steps does IT infrastructure apply any of the recited judicial
exceptions. Thus, that IT infrastructure may be implemented by a technical
service configured to do so or used to generate a service model does not
impose any meaningful limits on practicing the abstract idea.
Furthermore, contrary to Appellant’s contention (Appeal Br. 26),
claim 1 is not analogous to the claims found eligible in DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). In DDR Holdings, the
Federal Circuit determined that the claims addressed the problem of
retaining website visitors who, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be transported instantly
away from a host’s website after clicking on an advertisement and activating
a hyperlink. DDR, 773 F.3d at 1257. The claimed invention in DDR
Holdings provided for the computer network not to operate in its normal,
expected manner; the claimed invention in DDR generated and directed the
visitor to a hybrid page that presented: (1) product information from the
third party, and (2) the visual “look and feel” elements from the host
website. DDR, 773 F.3d at 1258–59.
Claim 1 (and claim 29) at issue here is not similarly addressing a
problem specifically arising in the realm of computer networks and solving
that technological problem. That services and warranties were not
“effectively utilize[d]” in managing business services “in the current
‘Internet world’” prior to Appellant’s invention (Appeal Br. 26) does not
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explain how the invention overcomes a problem that is “rooted” in computer
“technology.”
We determine that neither claim 1 nor claim 29 integrate the judicial
exception into a practical application. There are no additional elements that
(1) improve the functioning of a computer or other technology, (2)
implement or use the judicial exceptions in conjunction with any particular
machine that is integral to the claim, (only generic computer parts are used
at most), (3) effect a transformation of a particular article to a different state,
or (4) apply or use the judicial exception in any meaningful way beyond
generally linking the use of the abstract idea to a particular technological
environment. See MPEP §§ 2106.05(a)–(c), (e)–(h).
STEP 2B
Step 2B requires that we look to whether the claim(s), that we have
determined above to set forth the judicial exception of an abstract idea,
“[a]dds a specific limitation [beyond the judicial exception that is] not well-
understood, routine, conventional activity in the field.” Guidance, 84 Fed.
Reg. at 56; MPEP § 2106.05(d)).
Neither a finding of novelty nor a non-obviousness determination
automatically leads to the conclusion that the claimed subject matter is
patent-eligible. A novel and non-obvious claim directed to a purely abstract
idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see also
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.”). Thus, although the
second step in the Mayo/Alice framework is termed a search for an
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“‘inventive concept,’” the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for “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,
573 U.S. at 217–18 (citation omitted).
In light of the foregoing, we do not find Appellant’s argument that the
claimed process is an “improvement over existing (manual as well as
computer-based) techniques for service modeling tying the IT infrastructure
to representations of business services” or that it “provide[s] an improved
‘use of service utility and warranty . . .’” (Appeal Br. 11) persuasive to
overcome the Examiner’s rejection under 35 U.S.C. § 101. That is an
argument directed to the novelty and non-obviousness of the claims.
Nor do we find Appellant’s argument that because the generating
steps [A]–[C] are not conventional, routine, or well-understood (Appeal Br.
23–24) persuasive. That is because these steps are, as discussed above,
mental steps, which are abstract. They are not additional steps beyond the
judicial exception. An “advance [that] lies entirely in the realm of abstract
ideas, with no plausibly alleged innovation in the non-abstract application
realm . . . is ineligible for patenting.” SAP, 898 F.3d at 1163.
As just discussed, we determine that claim 1 contains no additional
elements beyond the abstract idea, or at most includes the use of a generic
computer element. Using generic computer components to perform abstract
ideas does not provide the necessary inventive concept. See Alice, 573 U.S.
at 223 (“[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.”); see also
SAP, 898 F.3d at 1163, 1170 (finding that the invocation of such computers
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for use in carrying out improved mathematical calculations amounts to
recitation of what is well-understood, routine, and conventional).
In light of the foregoing, we affirm the Examiner’s rejection that
claims 1 and 29 are directed to patent-ineligible subject matter.
Appellant has not argued claims 2–5, 7–13, 15, 16, 27, and 28, all of
which depend, directly or indirectly, from claim 1, separately. These claims,
therefore, fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
II
Rejection under 35 U.S.C. § 112, first paragraph
The Examiner finds that the claims lack written description because
“the Specification does not include the contracts being associated with the
first offerings,” which in the claim is associated with a technical service.
(Final Action 7, Ans. 17.) According to the Examiner, “[t]he Specification
provides support for business related offerings (second offerings) being
associated with the contracts.” (Final Action 7, Ans. 17–18.)
We disagree with the Examiner’s findings and conclusions. In
particular, we agree with Appellant that “[t]he use of adjectives first, second,
third, etc. in the claims and the specification distinguishes, for example, two
contracts from each other [but] does not tie the first contract [recited] in the
specification to the first contract [recited] in the claims.” (Appeal Br. 28.)
“In both the specification and the claims the adjectives first, second, third
etc. are used to distinguish offerings, services and customers for antecedent
purposes [in their respective discussions].” (Id.)
The Specification defines services as service utility (Spec. ¶ 6), and
explains that technical and business services are a “service utility” (id. ¶ 8).
Additionally, the Specification indicates that an “offering” is a combination
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of a service utility and a service level target (which is defined as a service
warranty). (Id. ¶¶ 8, 9.) The Specification goes on to explain that customers
can be associated “with a provided service under a contract.” (Id. ¶ 11, see
also id. ¶ 34 (“the customer 210 and service offering(s) 270 are associated
together by the contract 222.”).) Figure 1 schematically illustrates the
relationship between contracts, services, and offerings. (See id. ¶ 28.) In
that figure, it is shown that contracts are for any services, which by the
definition noted earlier, can be business or technical, and that those services
include offerings. In light of the foregoing, we do not affirm the Examiner’s
rejection that the Specification does not describe “the at least one contract-
item being associated with one of the at least one offering” which may be a
technical service offering.

Rejections under 35 U.S.C. § 112, second paragraph
A. Claims 1–5, 7–13, 15, 16, and 27–29
The Examiner concludes that because “the Specification appears to be
silent regarding the contracts being associated with the first offerings,” the
claims are indefinite. (Final Action 8.) We disagree for the reasons just
discussed above.
B. Claims 1–5, 7–13, 15, 16, and 27–29
The Examiner further finds the claims “recite[d] limitations, which are
too numerous to mention, that appear to refer back to previously introduced
limitations, or could be interpreted as introducing new limitations.” (Id.)
The Examiner “‘bears the initial burden . . . of presenting a prima
facie case of unpatentability.’” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). The Examiner’s rejection does not give Appellant a fair opportunity
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to argue the merits of the Examiner’s rejection because the Examiner has
failed to clearly and specifically identify the limitations for which there is a
perceived problem. Thus, we reverse this rejection.
C. Claim 28
The Examiner rejects claim 28 as being unclear in its scope because in
the Specification a “third service is associated with the third offering rather
than the first offering” which is inconsistent with the claim required
“indirectly exposing the third service to a second customer via the first
offering.” (Final Action 8.) We do not agree with the Examiner’s findings.
In particular, we do not find anything in the language of the claim to
be unclear. For this reason alone, we do not find the claim to be indefinite.
Second, the Specification need not exemplify the claimed language for it to
meet the definiteness requirement of 35 U.S.C. § 112, second paragraph.
And in any event, we note that Figure 3C, and the associated description in
the Specification describes a third offering, e.g., the EMEA Web Farm (as
opposed to the technical service named the NA Web Farm1), is associated
with a Business Service Offering, e.g., ERP Gold, and that third offering is
indirectly associated with Group B of Customer B, rather than Group A of
Customer B, through that ERP Gold offering. (Spec. ¶¶ 58–59.) Thus, we
conclude that the Specification depicts a third service indirectly exposed to a
second customer via the first offering of a contract item.
Consequently, we reverse this rejection.
III
Rejection under 35 U.S.C. § 103
The Examiner finds that Lewis discloses a method as claimed except
for generating the service model using a second component of the physical
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infrastructure. (Final Action 9–10.) The Examiner, however, finds that
“using components of the physical infrastructures to generate models is old
and well-known,” as evidenced by the system in Lymbery. (Id. at 10.) The
Examiner contends that the recitation that (1) the service model include “the
plurality of technical services, the plurality of business services, and the
plurality of contracts,” (2) the plurality of business include “at least one
second offering configured to provide utility for one of the plurality of
business services,” (3) the plurality of technical services include “at least
one first offering configured to provide utility for one of the plurality of
technical services,” (4) the contracts each include “at least one-contract
item” that is associated with at least one offering” are all “non[-]functional
descriptive material” requirements of the claim and are not functionally
involved in the steps such that the method steps (generating services,
contracts, and service model, and managing these things) would be
performed the same regardless of the specifics of the business service, the
technical service, the contracts, and the service model. (Final Action 10–11,
Ans. 19, 20, 21.) Furthermore, the Examiner finds that “the limitations
detailing the specifics of the plurality of technical services, the plurality of
business services, and the plurality of contracts” “are interpreted as
nonfunctional descriptive material.” (Ans. 19; Final Action 10–11.)
The Examiner concludes that it would have been obvious to one
having ordinary skill in the art to modify Lewis “in view of Official Notice
[that using components of the physical infrastructures to generate models is
old and well-known] and have the steps disclosed by Lewis (defining,
associating, etc.) be performed in the manner of Lymbery” to employ a
computer system to “implement the method of Lewis” because “the claimed
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invention is merely a combination of old elements, and in the combination
each element merely would have performed the same function as it did
separately, and one of ordinary skill in the art would have recognized that
the results of the combination were predictable.” (Final Action 11; Ans. 18.)
The Examiner further finds the alleged nonfunctional descriptive material
“will not distinguish the claimed invention from the prior art in terms of
patentability.” (Final Action 11; Ans. 19, 20, and 21.)
We disagree with the Examiner’s findings and conclusion of
obviousness. First, we disagree with the Examiner, that the requirements of
the business services (that they include a second offering with particular
requirements), the technical services (that they include a first offering with
particular requirements), and the service model (that it includes the plurality
of business services and the plurality of contracts) are “printed matter” such
that an analysis of whether that matter is directed to functional or
nonfunctional descriptive material is relevant. The limitations at issue here
are not mere “instructions” or “information” conveyed to someone as part of
the method, see, e.g., In re Huai-Hung Kao, 639 F.3d 1057, 1064, 1072–73
(Fed. Cir. 2011) (addressing a step of “providing information” to a patient
about a formulation property and medical condition); King Pharm. Inc. v.
Eon Labs Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (addressing a step of
“informing” patient about properties of drug).
“[A] limitation is printed matter only if it claims the content of [the]
information.” In re Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015). Here,
the content of the information per se of the offerings of the technical and
business services are not being claimed, nor is the content of the information
per se of the technical services, the business services, and the contracts in
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generating the service model. Rather, the claims require a particular
organizational structure of these services, namely the types of data content
that must be a part of these services, which types are interrelated to other
steps in the method, e.g., the contracts that are generated must include
contract-items that are associated with at least one offering, the service
model has to include the technical services, business services and the
contracts, and the business services must be managed using offerings and
service level targets. Accord In re Lowry, 32 F.3d 1579, 1581, 1583 (Fed.
Cir. 1994) (noting that Lowry did not “seek to patent the content of the
information resident in a database,” but “[r]ather the data structures impose a
physical organization on the data,” which is the information in the database.)
Second, in light of the foregoing, we determine that the Examiner has
failed to establish a prima facie case that Lewis discloses generating both a
plurality of technical services as well as a plurality of business services as
defined by claim 1. “An examiner bears the initial burden of presenting a
prima facie case of obviousness.” In re Kao, 639 F.3d 1057, 1066 (Fed. Cir.
2011).
The Examiner identifies the claimed technical services being
described by Lewis Figure 1 and column 36, whereas the business services
are described by Figures 1, 24, and 32 as well as columns 9 and 12. We note
that column 36 describes component-to-service mapping. (Lewis 36:22
et seq.) Figure 1 notes that this is a function that is performed for service
level management of a business process. Indeed, this is confirmed by
column 9, which describes generally this mapping process. (Id. at 9:10–20.)
This is not described in Lewis as a process that is used to establish business
services separate and apart from technical services. In other words, the
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description in column 36, which the Examiner relied on for the teaching of a
business service required by the claim, is a more detailed disclosure of what
is generally described in columns 9 and 12, which the Examiner relied on for
the teaching of the technical services required by the claim. Consequently,
we find that the Examiner has not established a prima facie case that Lewis
discloses both generating (1) the “plurality of technical services including at
least one first offering configured to provide utility for one of the plurality of
technical services, the at least one first offering including a plurality of first
service level targets used to measure a performance of the at least one first
offering;” required by claim 1 and (2) “the plurality of business services
including at least one second offering . . . the at least one second offering
being configured to use one or more of the plurality of technical services, the
at least one second offering including a plurality of second service level
targets used to measure a performance of the at least one second offering.”
Consequently, we reverse the Examiner’s rejection of claims 1–5, 7–
13, 15, 16, and 27–29 as being obvious over Lewis and Lymbery.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7–13,
15, 16, 27–
29
101 Eligibility 1–5, 7–13,
15, 16, 27–
29

1–5, 7–13,
15, 16, 27–
29
112, first
paragraph
Written
Description
1–5, 7–13,
15, 16, 27–
29
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1–5, 7–13,
15, 16, 27–
29
112,
second
paragraph
Indefiniteness 1–5, 7–13,
15, 16, 27–
29
1–5, 7–13,
15, 16, 27–
29
103(a) Lewis, Lymbery 1–5, 7–13,
15, 16, 27–
29
Overall
Outcome
1–5, 7–13,
15, 16, 27–
29

AFFIRMED