Ex Parte Helander et al

Patent Trial and Appeal Board

May 31, 2017

11354192 (P.T.A.B. May. 31, 2017)

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.
11/354,192 02/15/2006 Mary Elizabeth Helander YOR920050556US1 8549
7590 06/01/2017
McGinn Intellectual Property Law Group, PLLC
Suite 200
8321 Old Courthouse Road
Vienna, VA 22182-3817
EXAMINER
FLEISCHER, MARK A
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
06/01/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARY ELIZABETH HELANDER,
KAAN KUDSI KATIRCIOGLU, GIUSEPPE ANDREA PALEOLOGO,
and BONNIE KATHRYN RAY
____________

Appeal 2016-004522
Application 11/354,1921
Technology Center 3600
____________

ROBERT E. NAPPI, NORMAN H. BEAMER, and
SCOTT E. BAIN, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–3, 6, 8, and 21–23, which are all claims pending.
Claims 4, 5, 7, 9–20, and 24–26 are cancelled. We have jurisdiction over the
pending rejected claims under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify International Business Machines Corporation as the
real party in interest. (App. Br. 1.)
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Application 11/354,192

2
THE INVENTION
Appellants’ disclosed and claimed invention is directed to planning
for development of services solution offerings, including generating action
plans for portions of the development lifecycles of the services solution
offerings. (Abstract.)
Independent claim 6, reproduced below, is illustrative of the subject
matter on appeal:
6. A computer-implemented method of planning for
development of at least one services solution offering, the
method comprising:
generating by a programmed computer an incremental
action plan for a development lifecycle of the services solution
offering, the development lifecycle including a plurality of
portions, said generating comprising, in a processing unit of a
computer:
determining a value of said services solution
offering as a function of time within the development
lifecycle;
populating a mathematical decision-making model
based on said determined value; and
determining, for each of the plurality of portions of
the development lifecycle, whether and when to postpone
the portion, accelerate the portion, or decelerate the
portion based on the mathematical decision-making
model,
wherein said incremental action plan is generated in
consideration of revenue, profit, and sales, and
wherein said mathematical decision-making model is based on a
random variable in a time period, a cost of the services solution
offering, a budget, an investment in the services solution offering
in the time period, and when the services solution offering is
completed in the time period.

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REJECTION
The Examiner rejected claims 1–3, 6, 8, and 21–23 under 35 U.S.C.
§ 101 because the claimed inventions are directed to non-statutory subject
matter. (Final Act. 2–3.)

ISSUE ON APPEAL
Appellants’ arguments in the Appeal Brief presents the following
issue:2
Whether the Examiner erred in concluding the pending claims are
directed to non-statutory subject matter. (App. Br. 6–14.)

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner erred. We disagree with Appellants’ arguments,
and we adopt as our own (1) the pertinent findings and reasons set forth by
the Examiner in the Action from which this appeal is taken (Final Act. 2–3)
and (2) the corresponding findings and reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 2–8).
We concur with the applicable conclusions reached by the Examiner, and
emphasize the following.
The Examiner concludes the claims are directed to the abstract idea of
planning for the development of an action plan, and the additional recited

2 Rather than reiterate the arguments of Appellants and the positions of the
Examiner, we refer to the Appeal Brief (filed June 10, 2015); the Reply
Brief (filed Mar. 22, 2016); the Final Office Action (mailed Jan. 6, 2015);
and the Examiner’s Answer (mailed Feb. 3, 2016) for the respective details.
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elements are no more than instructions to implement the idea on a computer,
and recitations of well-known generic computer structure, that fail to
transform the abstract idea into patent eligible subject matter. (Final Act. 2–
3.)
Among the numerous arguments submitted, Appellants argue, inter
alia, the Examiner errs in characterizing the claims as directed to the abstract
idea of “planning for the development of an action plan,” because such is not
“a fundamental business practice,” and because the characterization is
inconsistent with the wording of the preamble, “planning for development of
at least one services solution offering.” (App. Br. 12.) Appellants argue the
Examiner’s rejection is conclusory and is not supported by a prima facie
showing, because the claimed subject matter is not merely an abstract idea
but rather “has been reduced to a particular practical application having a
real world use.” (App. Br. 6, 10.) Appellants also argue the claims are
directed to an improvement over conventional service solution development
systems, and do not preempt an abstract idea. (App. Br. 6–8.) Appellants
further argue “the claimed invention requires particular structural
components that are directed to statutory subject matter,” and that the claims
satisfy both prongs of the “‘machine-or transformation’ statutory subject
matter test” in that they “clearly describe a processing on a computer that
has been programmed in a very specific manner that executes a processing
using concepts specifically related to service solution offerings.” (App. Br.
9–10.)
We are not persuaded the Examiner errs. A patent may be obtained
for “any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The
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Supreme Court has “long held that this provision contains an important
implicit exception[:] Laws of nature, natural phenomena, and abstract ideas
are not patentable.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012)). Under the two-part
test described by the Supreme Court in Alice, “first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355
(2014). If so, then “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, 132 S. Ct. at 1298, 1297). The second step
of the framework also is characterized as “a search for an ‘inventive
concept’” — an element or combination of elements sufficient to ensure that
the claim amounts to “significantly more” than the abstract idea itself. Id.
(citing Mayo, 132 S. Ct. at 1294).
Here, we agree the claims are directed to the abstract idea of
“planning for the development of an action plan.” (Final Act. 2.) Despite
Appellants’ argument, this articulation is consistent with the preamble of the
independent claims, which recites “planning for development of at least one
services solution offering,” given the further recitation of “generating . . . an
incremental action plan.” (E.g., App. Br. 17.) In addition, the Specification
defines “services solution offerings” as “a ‘package’ that can be sold to a
customer,” such as “pure consulting” or “software.” (Spec. ¶¶ 14–15.)
Therefore, the Examiner correctly articulates the broad abstract idea to
which the subject matter of the claims are directed.
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This concept of planning for developing a services solution offering
(i.e., a “package”) by generating an action plan is similar to other
“fundamental economic concepts” found to be abstract ideas.3 See, e.g.,
Alice, 134 S. Ct. at 2357 (intermediated settlement); Bilski v. Kappos, 561
U.S. 593, 611 (2010) (risk hedging); Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 715 (Fed. Cir. 2014) (using advertising as an exchange or
currency); Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (data collection);
Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1346 (Fed. Cir. 2013) (generating tasks in an insurance organization); OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015) (pricing a
product for sale).
The Examiner’s conclusion is confirmed by the fact that the steps
recited in the claims can be performed either mentally or with “pencil and
paper.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371
(Fed. Cir. 2011). “A method that can be performed by human thought alone
is merely an abstract idea and is not patent-eligible under § 101.” 654 F.3d
at 1373.

3 The Federal Circuit has explained that, in determining whether claims are
patent-eligible under Section 101, “the decisional mechanism courts now
apply is to examine earlier cases in which a similar or parallel descriptive
nature can be seen—what prior cases were about, and which way they were
decided.” Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016). The Federal Circuit also noted in that decision that
“examiners are to continue to determine if the claim recites (i.e., sets forth or
describes) a concept that is similar to concepts previously found abstract by
the courts.” Amdocs, 841 F.3d at 1294 n.2 (citation omitted).

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Appellants’ argument that the claims do not preempt all methods of
planning for the development of an action plan do not make them any less
abstract. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) (collecting cases); Accenture, 728 F.3d at 1345; Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility”).
Beyond the abstract idea of planning for the development of an action
plan, the claims merely recite “well-understood, routine conventional
activit[ies],” either by requiring conventional computer activities or routine
data-gathering steps. Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at
1294). Considered individually or taken together as an ordered combination,
the claim elements fail “to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Id. at 2357 (quoting Mayo, 132 S. Ct. at 1294,
1298). For example, claim 6 recites a “computer-implemented method . . . a
programmed computer . . . a processing unit of a computer . . . .” Just as in
Alice, “all of these computer functions are ‘well-understood, routine,
conventional activit[ies],’ previously known to the industry.” Alice, 134 S.
Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294); see also buySAFE, 765 F.3d
at 1355 (“That a computer receives and sends the information over a
network—with no further specification—is not even arguably inventive.”);
Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687 F.3d 1266,
1278 (Fed. Cir. 2012) (a computer “employed only for its most basic
function . . . does not impose meaningful limits on the scope of those
claims”). The broadly recited computer implementation limitations of the
claims do little to limit their scope. Indeed, the specification makes clear
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that the methods are implemented on any “digital data processing apparatus,
to execute a sequence of machine-readable instructions.” (Spec. ¶ 92, see
also Figs. 9, 10.)
Nor does the claims’ recitation of such steps as “determining a value
of said services solution offering as a function of time within the
development lifecycle,” “populating a mathematical decision-making
model”; “consideration of revenue, profit, and sales”; or “model . . . based
on a random variable . . . cost . . . budget . . . investment [and] time period”
provide a meaningful limitation on the abstract idea. These processes are
well-understood, routine, conventional data-gathering activities that do not
make the claims patent eligible. See Alice, 134 S. Ct. at 2359; Mayo, 132 S.
Ct. at 1298. Like the claims in Mayo, which added only the routine steps of
administering medication and measuring metabolite levels for the purposes
of determining optimal dosage, here the addition of steps collect data and
make decisions does not add any meaningful limitations to the abstract idea.
Mayo, 132 S. Ct. at 1297–98; see also Alice, 134 S. Ct. at 2357 (“‘Simply
appending conventional steps, specified at a high level of generality,’ was
not ‘enough’ to supply an ‘inventive concept.’”) (quoting Mayo, 132 S. Ct.
at 1300, 1297, 1294); see also Ultramercial, 772 F.3d at 716 (“[T]he steps of
consulting and updating an activity log represent insignificant ‘data-
gathering steps,’ . . . and thus add nothing of practical significance to the
underlying abstract idea.”) (citations omitted).
Accordingly, we sustain the Examiner’s rejection of the pending
claims as directed to non-statutory subject matter.
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DECISION
The Examiner’s decision rejecting claims 1–3, 6, 8, and 21–23 is
affirmed.
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