Anerousis, Nikolaos et al.

Patent Trials and Appeals Board

Dec 20, 2019

14251144 - (D) (P.T.A.B. Dec. 20, 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.
14/251,144 04/11/2014 Nikolaos Anerousis YOR920130170US1 6629
98841 7590 12/20/2019
Otterstedt, Wallace & Kammer, LLP
P.O. Box 381
Cos Cob, CT 06807-0381
EXAMINER
HENRY, MATTHEW D
ART UNIT PAPER NUMBER
3683
MAIL DATE DELIVERY MODE
12/20/2019 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 NIKOLAOS ANEROUSIS, SHANG Q. GUO,
DANIELA ROSU, and FREDERICK Y. WU
____________

Appeal 2019-002830
Application 14/251,144
Technology Center 3600
____________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1, 2, 4–11, 13–19, and 21–28 (see Final Act.2 2).
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “International
Business Machines Corporation” (Appellant’s November 20, 2018 Appeal
Brief (Appeal Br.) 2).
2 Examiner’s April 18, 2018 Final Office Action.
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STATEMENT OF THE CASE
Appellant’s disclosure “relates to the electrical, electronic and
computer arts, and, more particularly, to information technology (IT)
services management and analytics, and the like” (Spec.3 1:12–13). Claim 1
is representative and reproduced below:
1. A method comprising:
executing a system management tool, with a risk
assessment mode enabled, within an execution infrastructure on
a management computer system, to manage a target computer
system in a production situation;
during execution of said system management tool with
said risk assessment mode enabled, when said execution of said
tool reaches a risk segment which is not deemed safe:
informing a user of said tool of at least one action
to be executed in said risk segment;
if said user agrees, allowing said tool to execute
said risk segment;
otherwise, overriding said risk segment with one or
more alternate operations; and
at least when said risk segment is executed,
obtaining feedback from said user regarding whether said risk
segment is deemed safe;
repeating said executing, informing, allowing, and
obtaining steps for a plurality of additional risk segments until
all of said risk segments are deemed safe; and
once all of said risk segments are deemed safe,
transitioning said system management tool from said risk
assessment mode to an automatic mode of operation;
wherein a given one of said risk segments is
conditionally executed until said given one of said risk
segments is deemed safe;

3 Appellant’s April 11, 2014 Specification.
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wherein said given one of said risk segments is
automatically executed once said given one of said risk
segments is deemed safe; and
wherein said given one of said risk segments is
conditionally executed at least once and then is automatically
executed at least once.
(Appeal Br. 42 (emphasis added).)

Grounds of rejection before this Panel for review:
Claims 1, 2, 4–11, 13–19, and 21–28 stand rejected under 35 U.S.C.
§ 101.
Claims 1, 2, 4, 5, 9–11, 13, 14, 18, 19, 21, 22, and 24–28 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of
Bassin (US 2011/0067005 A1; Mar. 17, 2011) and Hirsave (US
2007/0033445 A1; Feb. 8, 2007).
Claims 6–8, 15–17, and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bassin, Hirsave, and Burrell (US
2010/0205673 A1; Aug. 12, 2010).

Subject Matter Eligibility:
ISSUE
Does the preponderance of evidence of record support Examiner’s
finding that Appellant’s claimed invention is directed to patent ineligible
subject matter?
PRINCIPLES OF LAW
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
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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,
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 183 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Gottschalk, 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
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mathematical formula.” Diehr, 450 U.S. at 176; 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
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. (citing Gottschalk and Parker); 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 published revised guidance on the application of § 101.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (January 7, 2019) (“Revised Guidance”). 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
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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)).
See Revised Guidance, 84 Fed. Reg. at 54–55. 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.
See Revised Guidance, 84 Fed. Reg. at 51.
ANALYSIS
Applying the Revised Guidance to the facts on this record, we find
that Appellant’s claims are directed to patent-eligible subject matter.
The Revised Guidance instructs us first to determine whether any
judicial exception to patent eligibility is recited in the claim. The Revised
Guidance identifies three judicially-excepted groupings identified by the
courts as abstract ideas: (1) mathematical concepts, (2) certain methods of
organizing human behavior such as fundamental economic practices, and (3)
mental processes.
Examiner finds that Appellant’s
claims are directed toward informing a user of said tool of at
least one action to be executed in said risk segment, if said user
agree allowing said tool to execute said risk segment,
overriding said risk segment with one or more alternative
options, obtaining feedback from said user said risk segment is
deemed safe, repeating said executing, informing, allowing, and
obtaining steps for plurality of additional risk segments, and
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transitioning said system management tool from said risk
assessment mode to an automatic mode of operation wherein a
given one of said risk segments is conditionally executed until
said given one of said risk segments is deemed safe and
wherein said given one of said risk segments is automatically
executed once said given one of said risk segments is deemed
safe wherein said given one of said risk segments is
conditionally executed at least once and then is automatically
executed at least once . . ., which are considered to be abstract
[mental processes].
(Final Act. 17.) In addition, Examiner finds that “the abstract concept of
collecting and comparing known information and obtaining and comparing
intangible data because the limitations are collecting the data regarding risk
management then comparing that data to make a determination of [whether]
the risk segments are safe” and “receiving information, analyzing it, and
displaying it because risk management data is collected and analyzed to be
determined if it is safe to run, where the results are then displayed to a user
(e.g. annotating code with risk actions identified)” are abstract concepts, i.e.,
mental processes (id. at 17–18 (citing Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016), Classen Immunotherapies, Inc. v.
Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011), CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011))).
We find no error in Examiner’s finding that Appellant’s claimed
invention involves mental processes, an abstract idea.
We note, however, that “[i]n cases involving software innovations,
th[e] inquiry often turns on whether the claims focus on ‘the specific
asserted improvement in computer capabilities . . . or, instead, on a process
that qualifies as an abstract idea for which computers are invoked merely as
a tool.’” Finjan, Inc. v. Blue Coat System, Inc., 879 F.3d 1299, 1303 (Fed.
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Cir. 2018) (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36
(Fed. Cir. 2016) (internal quotation marks omitted)).
In contrast to Examiner’s analysis, on this record, we find that
Appellant’s claimed invention recites additional elements that integrate the
judicial exception into a practical application, i.e., an improvement in
computer capabilities. Integration into a practical application is evaluated by
identifying whether there are additional element individually, and in
combination, which go beyond the judicial exception. See Revised
Guidance, 84 Fed. Reg. 54–55. As explained in the October 2019 Update to
Subject Matter Eligibility4 “first the specification should be evaluated to
determine if the disclosure provides sufficient details such that one of
ordinary skill in the art would recognize the claimed invention as providing
an improvement” (PEG Update 12). As the PEG Update explains, although
the “specification need not explicitly set forth the improvement, . . . it must
describe the invention such that the improvement would be apparent to one
of ordinary skill in the art” (id.).
On this record, Appellant discloses that “[o]ne or more embodiments
provide a method for controlled execution of system management tools that
identifies and prevents the execution of unsafe code” (Spec. 8:13–14). In
this regard, Appellant discloses:
One or more embodiments maximize exploitation of
productivity tools while risk assessment is still in progress. At
least some instances model risk as a collection of risk actions
which, when executed, cause or increase the likelihood that a
high-risk system failure occurs. For example, “remove a file
known to be relevant for an application when the application is

4 Available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df (last accessed Nov. 15, 2019) (“PEG Update.”)
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running,” “reboot a server when users are logged on.” A risk
action involves a specific operation and one or more managed
resources (or configuration items, CI).
One or more embodiments identify risk conditions, i.e.,
situations when a risk action is likely to execute, and track
whether the action executed or not, providing reports and
documentation to support the user in performing risk
assessment. If tool execution completes automatically, the
[System Administrator (SA)] . . . knows that risk conditions
either did not occur on the targeted resources, or that the risk
actions corresponding to those conditions had already been
validated. In at least some instances, the tool executes in fully
automated mode after the tool is validated for all of the
materialized risk conditions, and the tool executes in semi-
automated mode when it is not validated for all of the risk
actions. The SA is provided a description, and possibly
emulation, of the risky code segment, and has to decide if
execution should proceed or stop. He or she provides feedback
on the actual tool level of safety.
One or more embodiments support incremental risk
assessment at the granularity of risk conditions. Some risk
conditions occur more frequently, while others are rare events.
Delaying fully-automated execution until all execution-
constraints are validated limits the realization of expected
benefits. SAs learn about the degree of risk relative to each risk
condition from reports on how the tool executes under risk
conditions. SAs can assess the tool as risk-free for some types
of risk actions after repeated correct execution. This
acknowledges that the tool can execute in fully automated mode
when no other risk conditions are materialized.
(Id. at 7:6–31; see also id. at 5:18–29, 10:1–6, 19:22–20:28, 22:29–23:8.)
In sum, we find that, on this record, Appellant’s claimed invention
recites additional elements that integrate the judicial exception into a
practical application, i.e., an improvement in computer capabilities (see
generally Appeal Br. 18 (referring to the “transitioning” step); see also
Reply Br. 5). See Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d
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1143, 1150 (Fed. Cir. 2019) (“software inventions [are] . . . patent-eligible
where they have made non-abstract improvements to existing technological
processes and computer technology”).
Finding that Appellant’s claims integrate the judicial exception into a
practical application concludes the eligibility analysis on this record.
Therefore, we need not address the contentions on this record concerning
what was, or was not, “well-understood, routine, conventional” in the field.
See generally Ans.5 18–19; cf. Revised Guidance, 84 Fed. Reg. at 51.
CONCLUSION
The preponderance of evidence of record fails to support Examiner’s
finding that Appellant’s claimed invention is directed to patent ineligible
subject matter. The rejection of claims 1, 2, 4–11, 13–19, and 21–28 under
35 U.S.C. § 101 is reversed.
Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Bassin “relates to a system and method of defect analysis, and more
particularly, to a method and system to determine defect risks in software
solutions” (Bassin ¶ 2; see generally Final Act. 23).
FF 2. Bassin’s “invention is operable to execute [a] risk model,” wherein
“the execution of the risk model may be repeated for each stage of the
software life cycle” and “testing is performed through each stage of the
software lifecycle” (Bassin ¶ 97; see Final Act. 24–25).

5 Examiner’s December 26, 2018 Answer.
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FF 3. Bassin discloses, as an aspect of its invention,
a system implemented in hardware comprises a risk factor
receiving (RFR) tool operable to receive one or more risk
factors and a context receiving (CR) tool operable to receive:
one or more contexts, one or more context relationships and
associations of the one or more contexts with the one or more
risk factors. Additionally, the system comprises a mapping tool
operable to map the one or more risk factors for an associated
context to a software defect related risk consequence to
determine a risk model and a software break-down (SB) tool
operable to break-down software into risk evaluation units.
Further, the system comprises a risk annotation tool operable to
evaluate and annotate a software solution with selected risk
factors for the risk evaluation units and a risk-based testing tool
operable to execute a risk-based testing on the software based
on the risk model to determine a defect related risk evaluation
for a software development project and collect test results and a
test process from the risk-based testing.
(Bassin ¶ 11.)
FF 4. Bassin’s
system comprises first program instructions to receive one or
more risk factors, second program instructions to receive one or
more contexts and identify one or more context relationships
and third program instructions to associate the one or more
contexts with the one or more risk factors. Furthermore, the
system comprises fourth program instructions to map the one or
more risk factors for an associated context to a software defect
related risk consequence to determine a risk model, wherein the
mapping the one or more risk factors comprises determining a
dimension where the one or more risk factors generates a risk
impact. The dimension comprises at least one of a failure
possibility dimension, which indicates a likelihood that a defect
will occur within a specific context and a failure damage
dimension, which indicates a consequence of an occurrence of
the defect in production. Additionally, the system comprises
fifth program instructions to execute a risk-based testing based
on the risk model to determine a defect related risk evaluation
for a software development project. The first, second, third,
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fourth and fifth program instructions are stored on the computer
readable storage media for execution by the CPU via the
computer readable memory.
(Bassin ¶ 13.)
FF 5. Bassin’s Figure 13 is reproduced below:

Bassin’s “FIG. 13 shows an exemplary table illustrating the test activities
that can be performed, and the related test design reference and artifacts that
are the targets under test in accordance with aspects of . . . [Bassin’s]
invention” (Bassin ¶ 25; see also ¶ 67 (“the steps of the flow diagram[] may
be implemented and executed from either a server, in a client server
relationship, or they may run on a user workstation with operative
information conveyed to the user workstation”); see Final Act. 23–25).
FF 6. Bassin “provides a risk analysis system and method, which is
orthogonal, defines risk contexts and associates risk factors with those
contexts, and dynamically updates risk as project requirements change with
the use of actual test results as feedback to adjust and tune throughout the
life cycle” (Bassin ¶ 32; see id. ¶ 34 (Bassin’s “invention is operable to
produce a break-down structure of the software under test, allows a user to
map risk factors to different levels of granularity and provides a mechanism
for accurately updating risk dynamically”); see generally Final Act. 23–24).
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FF 7. Bassin’s system “includes a risk annotation tool . . . operable to
evaluate and annotate the software solution with the selected risk factors for
the risk evaluation units” and “a risk-based testing tool . . . operable to
perform risk-based testing using the output of the risk annotation tool”
(Bassin ¶¶ 59 and 60; see Final Act. 23 and 30).
FF 8. Bassin discloses that the evaluation of risk factors “may be
performed manually, or (at least partially) automatically via an expert
system” (Bassin ¶ 74; see Final Act. 25).
FF 9. Bassin’s “risk annotation tool . . . is operable to evaluate and
annotate (or enable a user to evaluate and annotate) the software solution
with the selected risk factors for the risk evaluation units” and “assess each
risk factor that is associated with each risk evaluation unit, and determine a
risk factor value” (Bassin ¶ 104; see Final Act. 30).
FF 10. Examiner finds that Bassin does
not specifically disclose if said user agrees, allowing said tool
to execute said risk segment, overriding said risk segment with
one or more alternative operations, and once all of said risk
segments are deemed safe, transitioning said system
management tool from said risk assessment mode to an
automatic mode of operation, and wherein said given one of
said risk segments is automatically executed once said given
one of said risk segments is deemed safe and then is
automatically executed at least once.
(Final Act. 25 (emphasis added).)
FF 11. Hirsave “provides a method, apparatus, and program for automatic
risk assessment in a managed computer environment” (Hirsave ¶ 2).
FF 12. Hirsave discloses a method that “automatically assesses the risk of
installing [a] patch on a managed endpoint” (Hirsave ¶ 19; see Final Act.
25–26).
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FF 13. Hirsave discloses a method, wherein “[b]ased on the risk
assessment . . . [the] managing server . . . can apply [a] patch immediately,
schedule deployment of the patch for a later time, or notify the administrator
of a high risk so the administrator may take appropriate measures” (Hirsave
¶ 35; see also id. ¶ 38 (Hirsave discloses that a “low risk [assessment] may
indicate that the patch can be installed immediately without significantly
affecting productivity of the managed endpoint”); id. ¶ 46 (Hirsave discloses
that “[a] policy may specify that when a patch having a medium risk is
deployed, the patch may be installed immediately with a notification being
sent to the administrator so the administrator may monitor completion of the
patch”); see Final Act. 25–26).

FF 14. Examiner finds that the combination of Bassin and Hirsave does
not specifically disclose for each line of code in said system
management tool, identifying actions based on specifications in
a supporting database, and identifying configuration items
related to said actions based on a recorded action model and for
each set of consecutive ones of said actions and its related
configuration items, determining risk actions defined in said
supporting database, analyzing an annotated code to determine
said risk segments as groups of consecutive risk actions and
adjoining non-risk business processes and grouping said risk
actions in to different ones of said risk segments and to group
said risk actions with said adjoining non-risk code and
annotating said code with said risk segments.
(Final Act. 31.)
FF 15. Burrell relates to a method of examining vulnerable areas of source
code to identify “areas that are actually safe,” wherein “safe areas are
filtered from the universe of code that receives security mitigations” and
“[t]he remaining code receives security mitigations appropriate to the level
of risk of the code” (Burrell, Abstract; see Final Act. 32).
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FF 16. Burrell discloses that
identified areas of source code and identified variables may be
classified into categories of risk (e.g., high risk, medium risk,
low risk and no risk or other risk classification
system) . . . . Varying levels of code protection may be inserted
in an area of code based on the risk classification level of the
area of source code. Risk determinations may be based on a
combination of symbol allocation size, type and
structure. . . . [A]reas within the identified areas are examined
to determine if some of those areas do not need insertion of
security mitigating code, that is, to identify areas that are safe.
The universe of vulnerable source code is filtered to remove the
areas that have been identified as not needing security
mitigation code insertion, thereby creating a remaining subset
of source code that will be mitigated.
(Burrell ¶ 29; see Final Act. 31–32.)
ANALYSIS
The rejection over the combination of Bassin and Hirsave:
Based on the combination of Bassin and Hirsave, Examiner concludes
that, at the time Appellant’s invention was made, it would have been prima
facie,
obvious to one of ordinary skill in the art at the effective filing
date of the claimed invention to have modified the teachings of
Bassin . . . to incorporate the teachings as taught by
Hirsave . . . in order to ensure risk is being analyzed properly
thereby ensuring accuracy of the results.
(Final Act. 27.) We are not persuaded.
We agree with Examiner’s finding that Bassin and Hirsave both
disclose methodology for identifying risk associated with software (see
generally FF 1 and 11). We note, however, that Appellant’s independent
claims require, inter alia, that a management tool is executed with a risk
assessment mode enabled and then, after all risk segments are deemed safe,
the system management tool is transitioned from a risk assessment mode to
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an automatic mode of operation (see Appeal Br. 42 (Appellant’s independent
claim 1); see also id. at 42–43 (Appellant’s independent claim 10); id. at 46–
47 (Appellant’s independent claim 18); id. at 49–50 (Appellant’s
independent claim 25)).
Examiner acknowledges that Bassin does not disclose, inter alia, a
method, wherein “once all of said risk segments are deemed safe,
transitioning said system management tool from said risk assessment mode
to an automatic mode of operation” (FF 10). To make up for this deficiency
in Bassin, Examiner relies on Hirsave’s disclosure of a system, wherein,
based on the risk assessment, a managing server either applies a patch
immediately, schedules deployment of a patch at a later time, or notifies an
administrator to take appropriate measures (FF 13). According to Examiner,
Hirsave discloses that a patch may be installed automatically, i.e.,
immediately, when the system detects a low risk (see Ans. 15–16).
Although Examiner’s rationale may be correct as to the automatic
installation of a patch after a low risk assessment is made, Examiner failed
to establish that this evidence supports a conclusion that the combination of
Bassin and Hirsave suggests transitioning a management tool from a risk
assessment mode to an automatic mode of operation after all risk segments
are deemed safe as required by Appellant’s claimed invention. See In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[E]xaminer bears the initial
burden, on review of the prior art or on any other ground, of presenting a
prima facie case of unpatentability.”).
Thus, we find that the weight of evidence falls in favor of Appellant’s
contention that although
Hirsave discuss[es] automatically assessing the risk associat[ed]
with a patch, such that a patch with a low risk may be installed
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immediately . . ., the skilled artisan would not glean, in this
context, the concept of transitioning from risk assessment mode
(e.g., with conditional execution) to an automatic mode of
operation once all risk segments are deemed safe.
(Appeal Br. 32–33; see also Reply Br. 17–18
Therefore, we find that Examiner failed to establish an evidentiary
basis to support a conclusion with respect to Appellant’s claims 1, 2, 4, 5, 9–
11, 13, 14, 18, 19, 21, 22, and 24–28.

The rejection over the combination of Bassin, Hirsave, and Burrell:
Appellant’s claims 6–8 depend directly or indirectly from Appellant’s
independent claim 1. Appellant’s claims 15–17 depend directly or indirectly
from Appellant’s independent claim 10. Appellant’s claim 23 depends
directly or indirectly from Appellant’s independent claim 18.
Based on the combination of Bassin, Hirsave, and Burrell, Examiner
concludes that, at the time Appellant’s invention was made, it would have
been prima facie
obvious to one of ordinary skill in the art at the effective filing
date of the claimed invention to have modified the teachings of
Bassin . . . in view of Hirsave . . . to incorporate the teachings
as taught by Burrell . . . in order to better represent areas of risk
thereby ensuring the areas of risk are addressed.
(Final Act. 32.)
Examiner failed to establish an evidentiary basis on this record to
support a conclusion that Burrell makes up for the deficiency in the
combination of Bassin and Hirsave discussed above (see FF 15–16). See In
re Oetiker, 977 F.2d at 1445 (“[E]xaminer bears the initial burden, on review
of the prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). Therefore, we find that the weight of the evidence on this
Appeal 2019-002830
Application 14/251,144
18
record falls in favor of Appellant’s contention that “Bassin, alone or in
combination with Burrell, fails to remedy the above issues related to Hirsave
in the context of the presently claimed invention” (Appeal Br. 33; see also
Reply Br. 18).
CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claims 1, 2, 4, 5, 9–11, 13, 14, 18, 19, 21, 22, and 24–
28 under 35 U.S.C. § 103(a) as unpatentable over the combination of Bassin
and Hirsave is reversed.
The rejection of claims 6–8, 15–17, and 23 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Bassin, Hirsave, and Burrell is
reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2,
4–11, 13–19,
21–28
101 Eligibility 1, 2, 4–11,
13–19,
21–28
1, 2, 4, 5,
9–11, 13, 14,
18, 19, 21,
22, 24–28
103 Bassin, Hirsave 1, 2, 4, 5,
9–11, 13, 14,
18, 19, 21,
22, 24–28
6–8, 15–17,
23
103 Bassin, Hirsave,
Burrell
6–8, 15–17,
23
Overall
Outcome
1, 2, 4–11,
13–19,
21–28

REVERSED