ACCENTURE GLOBAL SERVICES LIMITED

Patent Trials and Appeals Board

Aug 21, 2020

2020002526 (P.T.A.B. Aug. 21, 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.
14/857,412 09/17/2015 Murray Todd WILLIAMS D10-163-02383-51-US 7411
79340 7590 08/21/2020
MANNAVA & KANG, P.C.
3201 JERMANTOWN ROAD
SUITE 525
FAIRFAX, VA 22030
EXAMINER
KNOX, TYLER W
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
08/21/2020 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):
ASHOKM@MANNAVAKANG.COM
docketing@mannavakang.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MURRAY TODD WILLIAMS
Appeal 2020-002526
Application 14/857,412
Technology Center 3600
Before LARRY J. HUME, CATHERINE SHIANG, and
MATTHEW J. McNEILL,Administrative Patent Judges.
HUME,Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 21–23, 25–27, 29–32, and 34–35,
which are all claims pending in the application. Appellant has canceled
claims 1–20, 24, 28, and 33. See Appeal Br. 37 et seq. (Claims App.). We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Accenture Global
Services Limited. Appeal Br. 3.
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STATEMENT OF THE CASE2
The claims are directed to a service oriented architecture optimization
system and method. See Spec. (Title). In particular, Appellant’s disclosed
embodiments and claimed invention relate to:
A multivariate business process modeling or
management (BPM) optimization system and method for
optimizing a BPM system includes a logic layer to control
operation of the BPM system, a utility layer to implement a
randomized experimental treatment based on a hypothesis, and
a persistence layer to collect data from application of the
randomized experimental treatment to the BPM system. The
multivariate BPM optimization system and method optimizes
the BPM system by computerized testing of the hypothesis and
generation of results to add, remove or modify a step or modify
a point in a flow of the BPM system based on the data collected
from application of the randomized experimental treatment.
Spec. 35 (Abstr.).

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Oct. 28, 2019); Reply Brief (“Reply Br.,” filed Feb. 10, 2020); Examiner’s
Answer (“Ans.,” mailed Dec. 20, 2019); Non-Final Office Action (“Non-
Final Act.,” mailed Apr. 29, 2019); and the original Specification (“Spec.,”
filed Sept. 17, 2015) (claiming benefit of US 13/047,985, filed
Mar. 15, 2011, now abandoned).
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Exemplary Claim
Claim 21, reproduced below, is representative of the subject matter on
Appeal (emphases added to dispositive prior-art limitations):
21. A service oriented architecture (SOA) optimization
system to optimize an application service composition in a
service oriented architecture (SOA), the system comprising:
an interface;
a hardware processor;
a storage device storing instructions that when executed
by the hardware processor cause the hardware processor to:
identify a point in the application service
composition to test;
determine an experiment for testing the application
service composition at the identified point;
receive attributes for the experiment from a user
via the interface, wherein the attributes are variables in
the experiment;
provide an experimental rule for the SOA
optimization system, wherein the experimental rule
indicates that if a value of one of the attributes related to
the user is below a certain threshold, the application
service composition is to automatically disqualify the
user;
randomly assign levels for each of the attributes;
implement the experiment on the application
service composition by executing the application service
composition based on the randomly assigned levels of the
attributes and the experimental rule;
collect result data at the identified point from the
implementation of the experiment on the application
service composition based on each of the randomly
assigned levels of the attributes;
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determine treatments for the identified point in the
application service composition based on the collected
result data;
administer the treatments based on segment
information provided for the experiment;
determine if at least one of the treatments is
suboptimal prior to completion of the experiment based
on analysis of outcomes of administering the at least one
treatment during the experiment;
flag the at least one treatment as suboptimal while
the experiment is running if the at least one treatment is
determined to be suboptimal;
apply the treatments to the experiment;
change a flow of the application service
composition as a result of applying the treatments to the
experiment, including adding, removing, or modifying a
particular point in the application service composition to
optimize the application service composition;
capture and track data generated from the
experiment;
generate a unique identifier (UID) to associate
with the captured and tracked data generated from the
experiment;
log the captured and tracked data generated from
the experiment in association with the UID; and
generate a result of the experiment that specifies an
optimal threshold value for the attribute related to the
user at which to automatically disqualify the user based
on the captured and tracked data generated from the
experiment;
an instance cache to store the UID, the received
attributes, the randomly assigned levels, and the captured and
tracked data of the experiment; and a history cache to store
output data of the experiment.
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REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Honarvar et al. (“Honarvar”) US 2004/0148211 A1 July 29, 2004
Liu et al. (“Liu”) US 2010/0257009 A1 Oct. 7, 2010
REJECTIONS
R1. Claims 21–23, 25–27, 29–32, and 34–35 stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without amounting to significantly more than the abstract idea itself. Non-
Final Act. 10.
R2. Claims 21–23, 25–27, 29–32, and 34–35 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Liu and
Honarvar. Non-Final Act. 19.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 12–35) and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-
ineligible subject matter Rejection R1 of claims 21–23, 25–27, 29–32, and
34–35 on the basis of representative claim 21. We address the appeal of
obviousness Rejection R2 of independent claims 21, 27, and 32, and
dependent claims 22, 23, 25, 26, 29–31, 34, and 35 depending therefrom,
infra. 3

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We agree with particular arguments set forth by Appellant with
respect to obviousness Rejection R2 of claims 21–23, 25–27, 29–32,
and 34–35.
However, we disagree with Appellant’s arguments with respect to
subject matter eligibility Rejection R1 of claims 21–23, 25–27, 29–32, and
34–35 and, unless otherwise noted, we incorporate by reference herein and
adopt as our own: (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken, and (2) the reasons and rebuttals
set forth in the Examiner’s Answer in response to Appellant’s arguments.
We highlight and address specific findings and arguments regarding
claim 21 for emphasis as follows.
1. § 101 Rejection R1 of Claims 21–23, 25–27, 29–32, and 34–35
Issue 1
Appellant argues (Appeal Br. 14–28; Reply Br. 4–10) the Examiner’s
rejection of claim 21 under 35 U.S.C. § 101 as being directed to patent-

shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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ineligible subject matter is in error. These contentions present us with the
following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?
Principles of Law
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.4
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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, 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

4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853)));
and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
Examples of claims that do not recite mental processes because they
cannot be practically performed in the human mind include: (a) a claim to a
method for calculating an absolute position of a GPS receiver and an
absolute time of reception of satellite signals, where the claimed GPS
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receiver calculated pseudoranges that estimated the distance from the GPS
receiver to a plurality of satellites, SiRF Technology, Inc. v. International
Trade Commission, 601 F.3d 1319, 1331–33 (Fed. Cir. 2010); (b) a claim to
detecting suspicious activity by using network monitors and analyzing
network packets, SRI Int’l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1304
(Fed. Cir. 2019); (c) a claim to a specific data encryption method for
computer communication involving a several-step manipulation of data,
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed.
Cir. 2016) (distinguishing TQP Development, LLC v. Intuit Inc., 2014 WL
651935 (E.D. Tex. Feb. 19, 2014)) (the specific data encryption method
“could not conceivably be performed in the human mind or with pencil and
paper”). Whereas a claim limitation to a process that “can be performed in
the human mind, or by a human using a pen and paper” qualifies as a mental
process, a claim limitation that “could not, as a practical matter, be
performed entirely in a human’s mind” (even if aided with pen and paper)
would not qualify as a mental process.5
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[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 191 (“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

5 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 1375-
76 (Fed. Cir. 2011) (distinguishing Research Corp. Techs. v. Microsoft
Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319 (Fed. Cir. 2010)).
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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 attempting
to limit the use of the formula to a particular technological environment.”
Id. (citation omitted) (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 (citation 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. (alterations in original) (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.
B. USPTO Revised Guidance
The PTO published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “Revised
Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/
2018-28282.pdf). “All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Id. at 51; see also October
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2019 Update at 1 (October 2019 Update: Subject Matter Eligibility)
(hereinafter “October 2019 Update”).
Under the Revised 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);6 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).7
See Revised Guidance 52–53.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is 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.8
See Revised Guidance 56.

6 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
7 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
8 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Revised Guidance 52 (footnotes omitted).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.9

9 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
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However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements, along with the
limitations that recite a judicial exception, individually and in combination
to determine whether they integrate the exception into a practical
application.
The seven identified “practical application” sections of the MPEP,10
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations

10 See MPEP § 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while § 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though one or more claim
elements may recite a judicial exception.11 The Federal Circuit has held
claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B)
because the additional elements recited in the claims provided “significantly
more” than the recited judicial exception (e.g., because the additional
elements were unconventional in combination).12 Therefore, if a claim has
been determined to be directed to a judicial exception under Revised Step

11 See, e.g., Diehr, 450 U.S. at 187.
12 See, e.g., Amdocs, Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300,
1304 (Fed. Cir. 2016); BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings v.
Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
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2A, we must also evaluate the additional elements individually and in
combination under Step 2B to determine whether they provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the exception itself).13
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
Section III.B.14

13 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
14 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
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In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See Berkheimer Memo 3–4.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
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Analysis
Step 1 – Statutory Category
Claim 21, as a system (machine) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
In citing precedential support for relying upon the preamble of system
claim 21 to determine what the claim is directed to, the Examiner
determined the claim is directed to “an abstract idea to: ‘optimize an
application service composition in a service oriented architecture (SOA)
system’” (Non-Final Act. 11), and further concluded this abstract idea may
be characterized under the Revised Guidance as “‘certain methods of
organizing human activity — [1] fundamental economic principles or
practices (including hedging . . . mitigating risk) . . . [2] commercial . . .
interactions (including . . . business relations); managing personal behavior
or relationships or interactions between people (including . . . following
rules or instructions).’” Non-Final Act, 12 (quoting Revised Guidance
at 52).
We conclude claim 21 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 21 recites an abstract idea based upon the Revised Guidance.
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses that
the invention is directed to “MVT [MULTIVARIATE] OPTIMIZATION
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OF BUSINESS PROCESS MODELING [“BPM”] AND
MANAGEMENT.” Spec. 1 (Title). Further, “[t]he multivariate BPM
optimization system may optimize the BPM system by computerized testing
of the hypothesis and generation of results to add, remove or modify a step
or modify a point in a flow of the BPM system based on the data collected
from application of the randomized experimental treatment.” Spec. ¶ 4.
Appellant’s Abstract describes the invention as:
A multivariate business process modeling or
management (BPM) optimization system and method for
optimizing a BPM system includes a logic layer to control
operation of the BPM system, a utility layer to implement a
randomized experimental treatment based on a hypothesis, and
a persistence layer to collect data from application of the
randomized experimental treatment to the BPM system. The
multivariate BPM optimization system and method optimizes
the BPM system by computerized testing of the hypothesis and
generation of results to add, remove or modify a step or modify
a point in a flow of the BPM system based on the data collected
from application of the randomized experimental treatment.
Spec. 35 (Abstract).
With respect to this phase of the analysis, Appellant argues the
“claims recite a specific technical process that is performed to optimize an
application service composition in a service oriented architecture (SOA)[.]”
Appeal Br. 17.
In TABLE I below, we identify in italics the specific claim limitations
in claim 21 that we conclude recite an abstract idea. We additionally
identify in bold the additional (non-abstract) claim limitations that are
generic computer components and techniques, and underline limitations
representing extra or post-solution activity:
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TABLE I
Independent Claim 21 Revised Guidance
A service oriented architecture
(SOA) optimization system to
optimize an application service
composition in a service
oriented architecture (SOA),
the system comprising:
A system (machine) is a statutory subject
matter class. See 35 U.S.C. § 101. See 35
U.S.C. § 101 (“Whoever invents or
discovers any new and useful process,
machine, manufacture, or composition of
matter, or any new and useful
improvement thereof, may obtain a
patent therefor, subject to the conditions
and requirements of this title.”).
[L1a] an interface;
[L1b] a hardware processor;
[L1c] a storage device
As claimed, an interface, a hardware
processor, and a storage device
represent generic computer
components. See, e.g., Spec. ¶¶ 51–52.
[L2] storing instructions that
when executed by the hardware
processor cause the hardware
processor to:
Storing instructions (information) is
insignificant extra-solution activity.
2019 Revised Guidance; see also
MPEP § 2106.05(g).
[L3] identify a point in the
application service
composition to test;
“[I]dentify[ing] a point . . . to test” is an
abstract idea, i.e., an observation,
evaluation, judgment, opinion” that
could be performed as a mental process.
See Revised Guidance 52.
[L4] determine an experiment
for testing the application
service composition at the
identified point;
“[D]etermin[ing] an experiment for
testing” is an abstract idea, i.e., an
observation, evaluation, judgment,
opinion” which could be performed as a
mental process. See Revised Guidance
52.
[L5] receive attributes for the
experiment from a user via the
interface, wherein the attributes
are variables in the experiment;
Receiving information, i.e., “attributes
for the experiment,” which are
“variables in the experiment”, is merely
insignificant extra-solution activity that
does not add significantly more to the
abstract idea to render the claimed
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Independent Claim 21 Revised Guidance
invention patent-eligible. Revised
Guidance 55, n.31; see In re Bilski, 545
F.3d 943, 962 (Fed. Cir. 2008) (en
banc), aff’d on other grounds, 561 U.S.
593 (2010) (“[T]he involvement of the
machine or transformation in the
claimed process must not merely be
insignificant extra-solution activity”)
[L6] provide an experimental
rule for the SOA optimization
system, wherein the
experimental rule indicates that
if a value of one of the
attributes related to the user is
below a certain threshold, the
application service
composition is to automatically
disqualify the user;
“[P]rovid[ing] an experimental rule . . .
[to determine whether to] disqualify the
user” is an abstract idea, i.e., “Certain
methods of organizing human activity .
. . including . . . interactions between
people . . . in the form of . . .
advertising, marketing or sales
activities” or, alternatively, managing
relationships by following rules or
instructions. See Revised Guidance 52.
[L7] randomly assign levels for
each of the attributes;
“[R]andomly assign[ing] levels for each
of the attributes [i.e., variables in the
experiment]” is an abstract idea, i.e., an
observation, evaluation, judgment,
opinion” which could be performed as a
mental process. See Revised Guidance
52.
[L8] implement the experiment
on the application service
composition by executing the
application service
composition based on the
randomly assigned levels of the
attributes and the experimental
rule;
“[I]mplement[ing] the experiment . . .
based on the randomly assigned levels
of the attributes and the experimental
rule” is an abstract idea, i.e., an
observation, evaluation, judgment,
opinion” which could be performed as a
mental process or, alternatively, is an
abstract idea as certain methods of
organizing human activity in the form
of managing interactions using rules or
instructions. See Revised Guidance 52.
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Independent Claim 21 Revised Guidance
[L9] collect result data at the
identified point from the
implementation of the
experiment on the application
service composition based on
each of the randomly assigned
levels of the attributes;
“[C]ollect[ing] result data,” i.e., data
gathering, is insignificant extra-solution
activity. Revised Guidance 55, n.31;
see also MPEP § 2106.05(g).
[L10] determine treatments for
the identified point in the
application service
composition based on the
collected result data;
“[D]etermin[ing] treatments . . . based
on the collected result data” is an
abstract idea, i.e., an observation,
evaluation, judgment, opinion” which
could be performed as a mental process.
See Revised Guidance 52.
[L11] administer the treatments
based on segment information
provided for the experiment;
“[A]dminister[ing] the treatments based
on segment information provided” is
insignificant extra-solution activity.
Revised Guidance 55, n.31.
[L12] determine if at least one
of the treatments is suboptimal
prior to completion of the
experiment based on analysis
of outcomes of administering
the at least one treatment
during the experiment;
“[D]etermin[ing] if . . . one of the
treatments is suboptimal . . . based on
analysis of outcomes” is an abstract
idea, i.e., an observation, evaluation,
judgment, opinion” which could be
performed as a mental process. See
Revised Guidance 52.
[L13] flag the at least one
treatment as suboptimal while
the experiment is running if the
at least one treatment is
determined to be suboptimal;
“[F]lag[ging] the . . . treatment as
suboptimal” is insignificant extra-
solution activity. Revised Guidance 55,
n.31.
[L14] apply the treatments to
the experiment;
“[A]pply[ing] the treatments to the
experiment” is an abstract idea, i.e.,
“Certain methods of organizing human
activity . . . including . . . commercial
interactions . . . in the form of . . .
advertising, marketing or sales
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Independent Claim 21 Revised Guidance
activities” or, alternatively, a
fundamental economic practice. See
Revised Guidance 52.
[L15] change a flow of the
application service
composition as a result of
applying the treatments to the
experiment, including adding,
removing, or modifying a
particular point in the
application service
composition to optimize the
application service
composition;
“[C]hang[ing] a flow of the application
service composition as a result of
applying the treatments to the
experiment” is an abstract idea, i.e.,
“Certain methods of organizing human
activity . . . including . . . commercial
interactions . . . in the form of . . .
advertising, marketing or sales
activities” or, alternatively, a
fundamental economic practice. See
Revised Guidance 52.
[L16] capture and track data
generated from the experiment;
“[C]aptur[ing] and track[ing] data,” i.e.,
data gathering, is insignificant extra-
solution activity. Revised Guidance 55,
n.31; see also MPEP § 2106.05(g).
[L17] generate a unique
identifier (UID) to associate
with the captured and tracked
data generated from the
experiment;
“[G]enerat[ing] a unique identifier . . .
to associate with the . . . data” is an
abstract idea, i.e., an observation,
evaluation, judgment, opinion” which
could be performed as a mental process.
See Revised Guidance 52.
[L18] log the captured and
tracked data generated from the
experiment in association with
the UID; and
Logging or storing data is insignificant
post-solution activity. Revised
Guidance 55, n.31; see also MPEP
§ 2106.05(g).
[L19] generate a result of the
experiment that specifies an
optimal threshold value for the
attribute related to the user at
which to automatically
disqualify the user based on the
“[G]enerat[ing] a result,” i.e.,
generating information is insignificant
post-solution activity. Revised
Guidance 55, n.31; see also MPEP
§ 2106.05(g).
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Independent Claim 21 Revised Guidance
captured and tracked data
generated from the experiment;
[L20] an instance cache to
store the UID, the received
attributes, the randomly
assigned levels, and the
captured and tracked data of
the experiment; and a history
cache to store output data of
the experiment.
As claimed, “an instance cache” and “a
history cache” storing various types of
data represent generic computer
elements and functionality. See, e.g.,
Spec. ¶¶ 32–33.
Appeal Br. 37–39 (Claims App.).
Under the broadest reasonable interpretation standard,15 we conclude
limitations L1 through L20 in claim 21 recite functions and steps that would
ordinarily occur when optimizing an application service composition in a
service oriented architecture (SOA). See Non-Final Act. 11–13. Other than
computer-related aspects, and as identified in TABLE I, limitations L3, L4,
L6–L8, L10, L12, L14, L15, and L17 recite abstract ideas, whether initiated
person-to-person, on paper, or using a computer.

15 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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In light of the limitations above, evaluated in light of the
Specification, we determine that claim 21, overall, recites certain methods of
organizing human activity in the form of a commercial interaction, i.e.,
optimizing an application service composition in a service oriented
architecture (SOA), which may also be performed by pen and paper. This
type of activity, as recited in limitations L1 through L20, for example, and
aside from any computer-related aspects, includes longstanding conduct that
existed well before the advent of computers and the Internet, and could be
carried out by a human with pen and paper. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental
processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalk v. Benson.”).16
Thus, under Step 2A(i), we agree with the Examiner that claim 21’s
“service oriented architecture (SOA) optimization system to optimize an
application service composition in a service oriented architecture (SOA)”
recites numerous abstract ideas. We conclude claim 21, under our Revised
Guidance, recites a judicial exception of certain methods of organizing

16 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
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human activity, i.e., commercial interactions in the form of marketing or
sales activities, and thus recites an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a judicial exception, as we conclude
above, we proceed to the “practical application” Step 2A(ii) in which we
determine whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
With respect to this phase of the analysis, Appellant argues:
[I]ndependent claim 21 recites a method to optimize the
application service composition, in which the system
implements an experiment at an identified point in the
application service composition. When the system determines
that a treatment applied to the experiment is suboptimal prior to
the completion of the experiment, the system changes a flow of
the application service composition, and generates a result that
specifies an optimal threshold value for an attribute at which to
automatically disqualify a user based on the data generated
from the experiment.
Appeal Br. 23. “Based on the simultaneous testing or manipulation of the
multiple processes, the system enables an improvement in the management
process.” Appeal Br. 24 (citing Spec. ¶ 20).
Thus, the additional features recited above in
independent claim 21, such as “determine if at least one of the
treatments is suboptimal prior to completion of the experiment”
and “change a flow of the application service composition as a
result of applying the treatments to the experiment, including
adding, removing, or modifying a particular point in the
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application service composition,” provide an improvement in a
computer-related Service Oriented Architecture (SOA)
technology and integrate the alleged abstract idea into a
practical application.
Appeal Br. 24.
As to the specific limitations, we find limitations L9 (“collect result
data”) and L16 (“capture and track data”) recite insignificant data gathering.
See MPEP § 2106.05(g). Data gathering, as performed by the steps or
function in Appellant’s claims, is a classic example of insignificant extra-
solution activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008)
(en banc), aff’d sub nom, Bilski v. Kappos, 561 U.S. 593 (2010).
We also find limitations L2 (“storing instructions”), L5 (“receive
attributes for the experiment from a user”), L11 (“administer the treatments
based on segment information provided for the experiment”), L13 (“flag the
at least one treatment as suboptimal”), L18 (“log the captured and tracked
data”), and L19 (generate a result of the experiment that specifies an optimal
threshold value for the attribute related to the user at which to automatically
disqualify the user based on the captured and tracked data”) recite
insignificant post solution activity. The Supreme Court guides that the
“prohibition against patenting abstract ideas ‘cannot be circumvented by’ . . .
adding ‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–11
(quoting Diehr, 450 U.S. at 191–92).
We conclude limitations L1a (“an interface”), [L1b] (“a hardware
processor”), [L1c] (“a storage device”), and L20 (“an instance cache to store
[data]” and “a history cache to store output data”) recite generic computer
elements and functionality. On this record, we are of the view that
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Appellant’s claims do not operate the recited generic computer components
in an unconventional manner to achieve an improvement in computer
functionality. See MPEP § 2106.05(a).
We find the limitations of claim 1 above recite abstract ideas as
identified in Step 2A(i), supra, and none of the limitations integrate the
judicial exception of a service oriented architecture (SOA) optimization
system to optimize an application service composition in a service oriented
architecture (SOA) into a practical application as determined under one or
more of the MPEP sections cited above. The claim as a whole merely uses
instructions to implement the abstract idea on a computer or, alternatively,
merely uses a computer as a tool to perform the abstract idea.
Under analogous circumstances, the Federal Circuit has held that
“[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that
[such] data . . . was previously collected, analyzed, manipulated, and
displayed manually, and it simply proposes doing so with a computer. We
have held such claims are directed to abstract ideas.” Univ. of Fla. Research
Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019); see
also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
2016) (“Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available information in a
particular field, stating those functions in general terms, without limiting
them to technical means for performing the functions that are arguably an
advance over conventional computer and network technology.”).
Therefore, the claim as a whole merely uses instructions to implement
the abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea. Thus, on this record, Appellant has not
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shown an improvement or practical application under the guidance of MPEP
section 2106.05(a) (“Improvements to the Functioning of a Computer or to
Any Other Technology or Technical Field”) or section 2106.05(e)(“Other
Meaningful Limitations”). Nor does Appellant advance any arguments in
the Brief(s) that are directed to the Bilski machine-or-transformation test,
which would only be applicable to the method (process) claims on appeal.
See MPEP §§ 2106.05(b) (Particular Machine) and 2106.05(c) (Particular
Transformation).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus claim 21 is directed to the judicial exception.
Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a judicial exception, and not integrated
into a practical application, as we conclude above, we proceed to the
“inventive concept” step. For Step 2B we must “look with more specificity
at what the claim elements add, in order to determine ‘whether they identify
an “inventive concept” in the application of the ineligible subject matter’ to
which the claim is directed.” Affinity Labs, 838 F.3d at 1258.
In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any “additional
features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be
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more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea17; mere instructions to implement an
abstract idea on a computer18; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.19
With respect to this phase of the analysis, Appellant argues additional
elements recited in the claims provide significantly more than an abstract
idea because the additional elements are unconventional in combination.
Appeal Br. 27. Appellant further argues:
As shown below in the arguments against the § 103 rejection,
the combination of features recited above in independent claims
21, 27, and 32 is not taught or suggested by the prior art. As
such, the combination of features recited in independent claims
21, 27, and 32 constitutes a non-conventional and non-generic
arrangement of the additional elements recited in the claims.
Accordingly, based on the 2019 PEG, the additional features
recited above in independent claims 21, 27, and 32 amount to
significantly more than an abstract idea. Thus, independent
claims 21, 27, and 32 are statutory under 35 U.S.C. § 101.
Appeal Br. 28.

17 Alice, 573 U.S. at 221–23.
18 Alice, 573 U.S. at 222–23, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer.
19 Alice, 573 U.S. at 225 (explaining using a computer to obtain data, adjust
account balances, and issue automated instructions involves computer
functions that are well-understood, routine, conventional activities).
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With respect to Appellant’s argument concerning the purported
novelty of the claimed invention, we note the Supreme Court emphasizes,
“[t]he ‘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.” Diehr, 450 U.S. at 188–89 (emphasis added). Our reviewing court
further guides that “[e]ligibility and novelty are separate inquiries.” Two-
Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340
(Fed. Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838
F.3d 1253, 1263 (Fed. Cir. 2016) (holding that “[e]ven assuming” that a
particular claimed feature was novel does not “avoid the problem of
abstractness”).
Evaluating representative claim 21 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
optimizing an application service composition in a service oriented
architecture (SOA) into a patent-eligible application of that abstract idea.
The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a
claim element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact.”
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the recited interface,
hardware processor, storage device, an instance cache, and a history
cache in system claim 21, and similarly for method claim 27 and computer-
readable medium claim 32, the Specification discloses:
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[0051] Figure 4 shows a computer system 400 that may be
used as a hardware platform for MVT BPM optimization
system 100. Computer system 400 may be used as a platform
for executing one or more of the steps, methods, modules,
services and functions described herein that may be embodied
as software stored on one or more computer readable mediums.
The computer readable mediums may be non-transitory, such as
storage devices including hardware.
[0052] Computer system 400 includes a processor 402 or
processing circuitry that may implement or execute software
instructions performing some or all of the methods, modules,
services, functions and other steps described herein. Commands
and data from processor 402 are communicated over a
communication bus 404. Computer system 400 also includes a
computer readable storage device 403, such as random access
memory (RAM), where the software and data for processor 402
may reside during runtime. Storage device 403 may also
include non-volatile data storage. Computer system 400 may
include a network interface 405 for connecting to a network. It
will be apparent to one of ordinary skill in the art that other
known electronic components may be added or substituted in
computer system 400.
Spec. ¶ 51–52.
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellants’
Specification, as quoted above.20

20 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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The MPEP, based upon our precedential guidance, provides additional
considerations with respect to analysis of the well-understood, routine, and
conventional nature of the recited computer-related components.
Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether
the additional elements amount to more than a recitation of the
words “apply it” (or an equivalent) or are more than mere
instructions to implement an abstract idea or other exception on
a computer. As explained by the Supreme Court, in order to
transform a judicial exception into a patent-eligible application,
the additional element or combination of elements must do
“‘more than simply stat[e] the [judicial exception] while adding
the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. __,
134 S. Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example,
claims that amount to nothing more than an instruction to apply
the abstract idea using a generic computer do not render an
abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110
USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at
1984 (warning against a § 101 analysis that turns on “the
draftsman’s art”) . . . .
In Alice Corp., the claim recited the concept of
intermediated settlement as performed by a generic computer.
The Court found that the recitation of the computer in the claim
amounted to mere instructions to apply the abstract idea on a
generic computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984.
The Supreme Court also discussed this concept in an earlier
case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673,
676 (1972), where the claim recited a process for converting
binary-coded decimal (BCD) numerals into pure binary
numbers. The Court found that the claimed process had no
substantial practical application except in connection with a
computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The
claim simply stated a judicial exception (e.g., law of nature or
abstract idea) while effectively adding words that “apply it” in a
computer. Id.
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MPEP § 2106.05(f) (“Mere Instructions To Apply An Exception”).
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a system that includes the generic computer components
arranged as claimed is simply not enough to transform the patent-ineligible
abstract idea here into a patent-eligible invention under Step 2B. See Alice,
573 U.S. at 221 (“[C]laims, which merely require generic computer
implementation, fail to transform [an] abstract idea into a patent-eligible
invention.”).
We conclude the claims fail the Step 2B analysis because claim 21, in
essence, merely recites various computer-based elements along with no
more than mere instructions to implement the identified abstract idea using
the computer-based elements.
Therefore, in light of the foregoing, we conclude, under the Revised
Guidance, that each of Appellant’s claims 21–23, 25–27, 29–32, and 34–35,
considered as a whole, is directed to a patent-ineligible abstract idea that is
not integrated into a practical application and does not include an inventive
concept. Accordingly, we sustain the Examiner’s § 101 rejection of
independent claim 21, and grouped claims 22, 23, 25–27, 29–32, and 34–35
which fall therewith. See Claim Grouping, supra.
2. § 103(a) Rejection R2 of Claims 21–23, 25–27, 29–32, and 34–35
Issue 2
Appellant argues (Appeal Br. 29–35; Reply Br. 11–16) the
Examiner’s rejection of claim 21 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Liu and Honarvar is in error. These
contentions present us with the following dispositive issue:
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Did the Examiner err in finding the cited prior art teaches or suggests
“[a] service oriented architecture (SOA) optimization system to optimize an
application service composition in a service oriented architecture (SOA),”
wherein the system includes “a storage device storing instructions that when
executed by the hardware processor cause the hardware processor to,” inter
alia, “receive attributes for the experiment from a user via the interface,
wherein the attributes are variables in the experiment,” and “randomly
assign levels for each of the attributes,” as recited in claim 21?
Analysis
The Examiner finds Liu teaches or suggests interfaces that receive
“attributes for the experiment (i.e., which to test), as well as stipulations of
‘Interval,’ ‘Adaptivity,’ and ‘Pool Threads’ as variables for the experiment.”
Non-Final Act. 23 (citing Liu ¶ 57). The Examiner further finds Liu’s
disclosure of “a simple workload generator which injects a number of
requests into the system under test with a bounded random time between
request arrivals” teaches or suggests randomly assigning levels for each of
the attributes. Non-Final Act. 25 (citing Liu ¶ 97).
The Examiner alternatively finds that Honarvar, in addition to Liu,
teaches or suggests the disputed limitation. Non-Final Act. 36.
“From step 150, the system also moves to step 160, where
clients are grouped in a random manner into different test
groups tor the purpose of applying competing policy rules,
strategy, or experiments. Thus, steps 155 and 160 can be seen
as being performed in parallel and/or having no inter-
dependency” (random assignment of test groups teaches
random assignment of levels) . . . .
Non-Final Act. 36–37 (quoting Honarvar ¶ 26).
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Appellant argues:
[T]he “random time” mentioned in Liu is a time for the
workload generator to inject the requests into the system under
test. However, injecting the requests into the system under test
at a random time is not the same as randomly assigning a level
for each of the attributes of an experiment. There is no
correlation between the random time to inject requests into the
system under test, as discussed in Liu, and randomly assigning
levels for each attributes of an experiment, as recited in
claim 21.
Appeal Br. 34.
Appellant further argues, “just because Liu mentions the word
‘random’ does not mean Liu discloses ‘randomly assign levels for each of
the attributes’ as recited in claim 21. The ‘random’ in paragraph [0097] of
Liu is ‘a bounded random time between request arrivals. For example, the
interval [75,200] means the request arrival time bound is between 75 to 200
milliseconds.’”
With respect to the Examiner’s proffer of Honarvar as alternatively
teaching or suggesting the disputed limitation, Appellant argues:
However, it is an unreasonable interpretation of Honarvar
for the Examiner to equate “clients” of Honarvar to “attributes”
of claim 21 and “different test groups” of Honarvar to “assigned
levels” of claim 21 because, as recited in claim 21, the
“attributes are variables in the experiment” “for testing the
application service composition at the identified point.” The
clients in Honarvar are not variables for testing an application
service composition at an identified point. Thus, grouping
clients in a random manner into different test groups, as
discussed in Honarvar, is not equivalent to “randomly assign
levels to each of the attributes” or “executing the application
service composition based on the randomly assigned levels of
the attributes and the experimental rule,” as recited in claim 21.
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36
Reply Br. 15.
We are persuaded by Appellant’s argument that neither Liu nor
Honarvar, alone or in combination, teach or suggest the dispositive
limitation “randomly assign levels for each of the attributes”. We disagree
with the Examiner’s contrary finding for essentially the same reasons
articulated by Appellant, as quoted above.
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner’s reliance on the cited prior
art to disclose the dispositive limitation of claim 21, such that we find error
in the Examiner’s resulting conclusion of obviousness.
Accordingly, we do not sustain the Examiner’s obviousness Rejection
R2 of independent claim 1, and independent claims 27 and 32 that recite the
disputed limitations in commensurate form. For the same reasons, we do not
sustain Rejection R2 of dependent claims 22, 23, 25, 26, 29–31, and 34–35
that variously and ultimately depend from claims 1, 27, and 32, and which
stand therewith.21
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 4–17) not in response to a shift in the Examiner’s position
in the Answer, arguments raised in a Reply Brief that were not raised in the

21 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on “a
single dispositive issue”).
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37
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
(1) Under our Revised Guidance, governed by relevant case law,
claims 21–23, 25–27, 29–32, and 34–35 are patent-ineligible under
35 U.S.C. § 101, and we sustain the rejection.
(2) The Examiner erred with respect to obviousness Rejection R2
of claims 21–23, 25–27, 29–32, and 34–35 under 35 U.S.C. § 103(a) over
the cited prior art combination of record, and we do not sustain the rejection.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See
37 C.F.R. § 41.50(a)(1).
DECISION SUMMARY
Claims
Rejected
35
U.S.C.
§
Basis /
References Affirmed Reversed
21–23, 25–27,
29–32, 34–35 101
Subject
Matter
Eligibility
21–23, 25–27,
29–32, 34–35
21–23, 25–27,
29–32, 34–35 103(a)
Obviousness
Liu, Honarvar
21–23, 25–27,
29–32, 34–35
Overall
Outcome
21–23, 25–27,
29–32, 34–35
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FINALITY AND RESPONSE
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. § 41.50(f).
AFFIRMED