Monika Gupta et al.

Patent Trials and Appeals Board

Dec 27, 2019

13598330 - (D) (P.T.A.B. Dec. 27, 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.
13/598,330 08/29/2012 Monika Gupta IN920110119US2(790.127C) 4607
89885 7590 12/27/2019
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
GURSKI, AMANDA KAREN
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
12/27/2019 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 MONIKA GUPTA, DEBDOOT MUKHERJEE, VIBHA
SINGHAL SINHA, LIANGJIE ZHANG, and NIANJUN ZHOU
________________

Appeal 2018-001298
Application 13/598,330
Technology Center 3600
________________

Before ELENI MANTIS-MERCADER, JASON J. CHUNG, and
JASON M. REPKO, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1–13. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention relates to “[m]ethods and arrangements for dynamically
facilitating project assembly.” Abstract. Claim 1 is illustrative of the
invention and is reproduced below:
1. A method comprising:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, International Business Machines
Corporation is the real party in interest. Appeal Br. 3.
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utilizing a processor to execute computer code configured
to perform the steps of:
submitting a project plan with a chosen set of plan
components, wherein the chosen set of plan components
comprises required hardware, software, and worker resources
for carrying out a project associated with the project plan and a
schedule associated with the project;
querying a cloud portal, having access to a plurality of
hardware and software resources and having access to
schedules of a plurality of worker resources, for information on
the chosen plan components, wherein the cloud portal accesses a
cloud comprising a plurality of preconfigured images
comprising standardized configurations of hardware and
software resources for use in a project, and wherein at least one
of the plurality of preconfigured images is cloned in response to
the query;
the at least one of the plurality of preconfigured images
that is cloned comprises an image including the required
hardware and software resources and fulfilling the chosen set of
plan components and wherein at least one license is assigned, by
the cloud portal, to the software resources included in the cloned
at least one of the plurality of preconfigured images;
receiving, from the cloud portal, the cloned at least one of
the plurality of preconfigured images comprising information on
the chosen plan components;
generating plan recommendations based on the received
cloned at least one of the plurality of preconfigured images,
wherein the plan recommendations include at least one
recommendation of another plan having at least one plan
component differing from the chosen plan components and
wherein the plan recommendations comprise recommended
plans meeting the chosen set of plan components and a
predetermined pricing constraint;
selecting a recommended plan; and
provisioning, by the cloud portal, the hardware, software,
and worker resources necessary for carrying out the selected
plan.

Appeal Br. 30 (Claims Appendix) (emphases added).
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REJECTIONS
Claims 1–13 stand rejected under 35 U.S.C. § 101 as being directed to
patent ineligible subject matter. Final Act. 3–5.
Claims 1–8, 11, and 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Motwani (US 2007/0260502 A1;
published Nov. 8, 2007), Sabin (US 2013/0007840 A1; filed June 28, 2011),
and Devarakonda (US 2013/0019015 A1; filed July 12, 2011). Final Act. 5–
16.
Claims 9, 10, and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Motwani, Sabin, Devarakonda, and
Dromgold (US 2007/0150327 A1; published June 28, 2007). Final Act. 16–
18.

ANALYSIS
I. Claims 1–13 Rejected Under 35 U.S.C. § 101
A. Legal Principles
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
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we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 192 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
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attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
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exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
B. The Examiner’s Conclusions and Appellant’s Arguments
The Examiner concludes the present claims are analogous to the
claims in In re TLI Communications, 823 F.3d 607 (Fed. Cir. 2016), which
the Federal Circuit held recites certain methods of organizing human
activity. Final Act. 4. The Examiner also determines the present claims do
not amount to significantly more than an abstract idea itself because the
abstract idea is implemented on generic components that are well-
understood, routine, and conventional. Id. at 5.
Appellant argues the Examiner’s analysis does not establish a prima
facie case of patent-ineligibility because it lacks sufficient explanation as to
why the claims recite an abstract idea. Appeal Br. 13–14; Reply Br. 11–15.
Appellant argues, similar to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016) and McRO, Inc. v. Bandai Namco Games America Inc., 837
F.3d 1299, 1308–14 (Fed. Cir. 2016), the present claims recite an
improvement in computer-related technology because they generate plan
recommendations. Appeal Br. 16–22; Reply Br. 20–23. Appellant further
argues, similar to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014), the present claims are necessarily rooted in technology to
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solve problems specifically arising in the realm of technology because
generation of plan recommendations based upon information received from
a cloud portal is a computer problem. Appeal Br. 18–19; Reply Br. 18–19.
Appellant argues, similar to BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), the present claims
recite a combination of non-conventional and non-generic arrangement of
known, conventional elements, which results in an inventive concept of
generating plan recommendations. Appeal Br. 15–16; Reply Br. 15–16. We
disagree with Appellant.
C. Discussion
1. Step 2A, Prong 1
The emphasized portions of claim 1,2 reproduced above (see supra at
1–2), recite managing personal behavior or interactions between people
because these limitations recite consumers partaking in project management.
See also Spec. ¶ 2 (“[I]n project management and execution, it can be very
difficult to change or adjust the association resources in alignment with
changing requirements.”); ¶ 47 (“User portable provides access to the cloud
computing environment for consumers and system administrators.”); ¶ 54
(“Generally, in accordance with at least one embodiment of the invention,
project manager 402 or another user, via interface 404, sends out a request
412 for booking images to portal 408.”); ¶ 56 (“[R]esponsive to request 412,
portal 408 provides information in pricing, availability and utilization of

2 Appellant does not argue claims 2–13 separately with particularity, but
assert the § 101 rejection of those claims should be withdrawn for at least
the same reasons as argued for independent claim 1. Appeal Br. 12–23.
We, therefore, refer to these claims as the “present claims.”
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images (422) back to . . . to project manager 402 (or another user) a
recommended plan for utilizing or allocating images.”).
That is, under the broadest reasonable construction in light of the
Specification, the present claims recite managing personal behavior or
interactions between people. According to the Memorandum, managing
personal behavior or interactions between people falls into the category of
certain methods of organizing human activity. See Memorandum.
Moreover, those certain methods of organizing human activity are a type of
an abstract idea. See id.
We disagree with Appellant’s argument that the Examiner fails to
present a prima facie case of patent ineligibility because the rejection lacks
sufficient explanation to support each abstract idea characterization. Appeal
Br. 13–14; Reply Br. 11–15. Patent eligibility under 35 U.S.C. § 101 is a
question of law that is reviewable de novo. See Dealertrack, Inc. v. Huber,
674 F.3d 1315, 1333 (Fed. Cir. 2012). We are aware of no controlling
authority that requires the Examiner to provide factual evidence under step
one of the Alice framework to support a determination that a claim is
directed to an abstract idea. The Federal Circuit has repeatedly noted that
“the prima facie case is merely a procedural device that enables an
appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d
1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992)). The Examiner satisfies the burden of establishing a prima facie
case under 35 U.S.C. § 132 by setting forth a rejection in a sufficiently
articulate and informative manner. In re Jung, 637 F.3d 1356, 1363 (Fed.
Cir. 2011). If the Examiner “adequately explain[s] the shortcomings . . . the
burden shifts to the applicant to rebut the prima facie case with evidence
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and/or argument.” Hyatt, 492 F.3d at 1370. The Final Office Action
adequately explains the § 101 rejection by concluding the present claims
recite certain methods of organizing human activity. Final Act. 5. The
Examiner’s statements satisfy § 132(a) because they apply the Alice
analytical framework and apprise Appellant of the reasons for the § 101
rejection under that framework. Appellant has not responded by alleging a
failure to understand the rejection. Indeed, Appellant appears to understand
and acknowledge the Examiner’s conclusion that the present claims recite
certain methods of organizing human activity because Appellant responds to
the Examiner’s conclusion that map the present claims to the claims in TLI.
Appeal Br. 15.
Because the present claims recite managing personal behavior or
interactions between people, which falls into the category of certain methods
of organizing human activity (i.e., an abstract idea), we proceed to prong 2.
2. Step 2A, Prong 2
The present claims do not integrate the abstract idea into a practical
application because they do not impose any meaningful limits on practicing
the abstract idea. In particular, we disagree with Appellant’s argument that,
similar to Enfish and McRO, the present claims recite an improvement in
computer-related technology because they generate plan recommendations.
Appeal Br. 16–22; Reply Br. 20–23.
Unlike the claims of Enfish, the present claims do not recite “a
specific improvement to the way computers operate, embodied in the self-
referential table.” Enfish, 822 F.3d at 1336. And unlike the claims of
McRO, the present claims do not recite rules for lip-sync and facial-
expression animation or an improvement in computer technology.
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Instead, the present claims recite an abstract idea as discussed supra,
in § I.C.1. or at best, improving an abstract idea—not a technological
improvement. The Specification indicates the additional elements (i.e.,
“processor,” “cloud portal,” and “cloud”) recited in the present claims are
merely tools used to implement the abstract idea. Spec. ¶¶ 31–37, 70, 87.
Further, the additional elements, individually and in combination, do not
integrate the judicial exception into a practical application.
Additionally, “a claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016). “[U]nder the Mayo/Alice framework, a claim directed to a newly
discovered law of nature (or natural phenomenon or abstract idea) cannot
rely on the novelty of that discovery for the inventive concept necessary for
patent eligibility . . . .” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369,
1376 (Fed. Cir. 2016) (citations omitted).
We also disagree with Appellant’s argument that, similar to DDR, the
present claims are necessarily rooted in technology to solve problems
specifically arising in the realm of technology because generation of plan
recommendations based upon information received from a cloud portal is a
computer problem. Appeal Br. 18–19; Reply Br. 18–19. Instead, the
present claims recite an abstract idea using additional generic elements as
tools to implement the abstract idea as discussed supra in §§ I.C.1., I.C.2. or
at best, the present claims are rooted in generating plan recommendations
and overcoming a problem arising in that area.
Appellant does not make any other arguments pertaining to step 2A,
prong 2. Because the present claims recite an abstract idea that is not
integrated into a practical application, we proceed to Step 2B.
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3. Step 2B
We agree with the Examiner’s determination that the abstract idea is
implemented on generic components that are well-understood, routine, and
conventional. Final Act. 7 (citing Spec. 4:2–4, 5); Ans. 6. The Specification
supports the Examiner’s determination in this regard because it explains that
“processor,” “cloud portal,” and “cloud” are generic components. Spec.
¶¶ 31–37, 70, 87. Appellant’s Specification indicates these elements were
well-understood, routine, and conventional components because it describes
them at a high level of generality and in a manner that indicates that they are
sufficiently well-known. Id. Moreover, the additional elements recited in
the present claims, taken individually and in combination, do not result in
the claim, as a whole, amounting to significantly more than the judicial
exception.
We disagree with Appellant’s argument that, similar to BASCOM, the
present claims recite a combination of non-conventional and non-generic
arrangement of known, conventional elements, which results in an inventive
concept of generating plan recommendations. Appeal Br. 15–16; Reply Br.
15–16. Instead, the present claims recite an abstract idea using generic
components as discussed supra, in §§ I.C.1. and I.C.2. or at best, improving
an abstract idea—not an inventive concept.
Appellant does not argue claims 2–13 separately with particularity,
but assert the § 101 rejection of those claims should be withdrawn for at
least the same reasons as argued for independent claim 1. Appeal Br. 12–23.
Based on our review of the dependent claims, these claims do not recite any
additional features that would transform the abstract idea embodied in claim
1 into an inventive concept. Accordingly, we sustain the Examiner’s
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rejection of: (1) independent claim 1; and (2) dependent claims 2–13 under
35 U.S.C. § 101.
II. Claims 1–13 Rejected Under 35 U.S.C. § 103
A. Motivation to Combine
The Examiner finds a person having ordinary skill in the art
(“PHOSITA”) would have combined Motwani’s utilization calculation and
project planning with Sabin’s templates for cloning for the benefit of easily
accessing duplicates of schedules for quick updating or rescheduling of a
project while in any part of the world, which saves time and resources for
planning. Final Act. 12. The Examiner finds a PHOSITA would have
combined Motwani’s utilization calculation and project planning with
Devarakonda’s software licensing in cloud applications for the benefit of
providing a complete package of cloned technology needed to perform tasks.
Id. at 12–13.
Appellant argues the Examiner fails to articulate a sufficient
motivation why a PHOSITA would look to the teachings of Sabin to
overcome the deficiencies of Motwani because Motwani has a field of
endeavor directed to project-management software that permits allocation of
resources to projects without tasks, whereas Sabin is directed to a system for
preventing information disclosure via dynamic secure cloud resources.
Appeal Br. 24–25; Reply Br. 24–25. Appellant argues the Examiner fails to
articulate a sufficient motivation why a PHOSITA would look to the
teachings of Devarakonda to overcome the deficiencies of Motwani because
Devarakonda has a field of endeavor directed to an application that runs on
the cloud and then allocating resources for that application running on the
cloud, whereas Motwani is directed to project management software that
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permits allocation of resources to projects without tasks. Appeal Br. 25–26;
Reply Br. 25–26. We disagree with Appellant.
As an initial matter, we note that Appellant’s argument uses the
incorrect test when analyzing field of endeavor/analogous art. The correct
statement is that a reference “qualifies as prior art for an obviousness
determination under § 103 only when it is analogous to the claimed
invention.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (emphasis
added). That is, we do not compare (1) Motwani with Sabin; and
(2) Motwani with Devarakonda. Rather, we compare the present case’s
written description and claims with (1) Motwani; (2) Sabin; and
(3) Devarakonda.
Moreover, we find the Examiner has set forth sufficient “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In particular, we
agree with the Examiner that a PHOSITA would have combined Motwani’s
utilization calculation and project planning with Sabin’s templates for
cloning for the benefit of easily accessing duplicates of schedules for quick
updating or rescheduling of a project while in any part of the world, which
saves time and resources for planning. Final Act. 12. And we agree with
the Examiner that a PHOSITA would have combined Motwani’s utilization
calculation and project planning with Devarakonda’s software licensing in
cloud applications for the benefit of providing a complete package of cloned
technology needed to perform tasks. Id. at 12–13.
Accordingly, the Examiner did not err in their motivation to combine
(1) Motwani and Sabin; and (2) Motwani and Devarakonda.
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B. Motwani, Sabin, and Devarakonda Teach Claim 1’s Limitations
The Examiner finds Motwani and Devarakonda teach the limitation
generating plan recommendations based on the received cloned
at least one of the plurality of preconfigured images, wherein the
plan recommendations include at least one recommendation of
another plan having at least one plan component differing from
the chosen plan components and wherein the plan
recommendations comprise recommended plans meeting the
chosen set of plan components and a predetermined pricing
constraint
(hereinafter “first disputed limitation”) recited in claim 1. Final Act. 11
(citing Motwani ¶ 32, Fig. 2; Devarakonda ¶ 80). The Examiner finds Sabin
teaches the limitation “cloud portal accesses a cloud comprising a plurality
of preconfigured images comprising standardized configurations of
hardware and software resources for use in a project” (hereinafter “second
disputed limitation”) recited in claim 1. Final Act. 8 (citing Sabin ¶ 34).
Appellant argues paragraphs 14, 22, 59, and 24 of Motwani fail to
teach the first disputed limitation. Appeal Br. 27; Reply Br. 27. Appellant
argues paragraphs 7 and 25 of Sabin fail to teach the second disputed
limitation. Appeal Br. 27–28; Reply Br. 27–28. Appellant argues
Devarakonda fails to teach the first disputed limitation and second disputed
limitation. Appeal Br. 28; Reply Br. 28. We disagree with Appellant.
As an initial matter, Appellant does not address or dispute the
Examiner’s mapping of paragraph 32 of Motwani or paragraph 80 of
Devarakonda to the first disputed limitation. Final Act. 11 (citing Motwani
¶ 32, Fig. 2; Devarakonda ¶ 80). Instead, Appellant argues paragraphs 14,
22, 59, and 24 of Motwani fail to teach the first disputed limitation. Appeal
Br. 27; Reply Br. 27. We, therefore, sustain the Examiner’s finding that
paragraph 32 of Motwani and paragraph 80 of Devarakonda teach the first
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disputed limitation.
Appellant does not address or dispute the Examiner’s mapping of
paragraph 34 of Sabin to the second disputed limitation. Final Act. 8 (citing
Sabin ¶ 34). Instead, Appellant argues paragraphs 7 and 25 of Sabin fail to
teach the second disputed limitation. Appeal Br. 27–28; Reply Br. 27–28.
We, therefore, sustain the Examiner’s finding that paragraph 34 of Sabin
teaches the second disputed limitation.
Appellant does not argue claims 2–13 separately with particularity,
but asserts the § 103 rejection of those claims should be withdrawn for at
least the same reasons as argued for independent claim 1. Appeal Br. 23–28.
Accordingly, we sustain the Examiner’s rejection of (1) independent claim 1
and (2) dependent claims 2–13 under 35 U.S.C. § 103.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–13 101 Eligibility 1–13
1–8, 11, 12 103 Motwani, Sabin,
Devarakonda,
1–8, 11, 12
9, 10, 13 103 Motwani, Sabin,
Devarakonda,
Dromgold
9, 10, 13
Overall
Outcome
1–13
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED