Anuradha Bhamidipaty et al.

Patent Trials and Appeals Board

Jul 28, 2021

2021001181 (P.T.A.B. Jul. 28, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/868,221 08/25/2010 Anuradha Bhamidipaty IN920100072US1
(790.073)
5475
89885 7590 07/28/2021
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
KOESTER, MICHAEL RICHARD
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
07/28/2021 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 ANURADHA BHAMIDIPATY,
BHUVAN SHARMA, and
VIRENDRA K. VARSHNEYA

Appeal 2021–001181
Application 12/868,221
Technology Center 3600

Before HUBERT C. LORIN, TARA L. HUTCHINGS, and
SHEILA F. McSHANE, Administrative Patent Judges.

LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s final decision to reject claims 1–20, which constitute all the
claims pending in this application.1 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies International Business Machines Corporation
as the real party in interest. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claimed subject matter “relates to systems and methods that
manage problems related to service selection for business processes in a
shared environment and for managing the end-to-end QoS [quality of
service] requirements for multiple business processes that access a shared
environment.” Spec., para. 2. Claim 1 is illustrative of the claimed subject
matter:
1. A computer implemented method for selecting a service
design solution for one or more business processes comprising:
accessing via a processor a library comprising a collection
of available shared services for supporting a plurality of business
processes, each business process comprising a plurality of tasks;
receiving a plurality of desired business processes,
wherein each desired business process comprises a business
process comprising a plurality of tasks, each of the plurality of
tasks accessing at least one shared service in a shared services
environment and wherein at least two of the desired business
processes have tasks accessing the same shared service in a
shared mode, wherein when in the shared mode the tasks access
the same shared service concurrently;
receiving at least one service constraint for each of the
desired business processes, wherein the at least one service
constraint identifies a parameter required by the corresponding
business process, wherein the at least one service constraint for
the at least two of the desired business processes conflict with
each other;
mapping, via a processor, each of the plurality of desired
business processes to more than one service candidate, wherein
each service candidate comprises one of the available shared
services contained within the library, wherein the mapping
comprises (i) identifying tasks included within each of the
desired business processes, (ii) mapping each of the identified
tasks to a service class, and (iii) identifying services included
within the service class as service candidates, wherein each of
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the more than one service candidate are associated with a
parameter;
selecting one of the mapped more than one service
candidate, based upon the at least one service constraint for the
plurality of desired business processes and a service load for each
of the more than one service candidate, the service load being
caused by a number of tasks accessing the corresponding more
than one service candidate concurrently, using a combinatorial
selection technique, wherein the combinatorial selection
technique comprises a multiple objective optimization technique
comprising:
assigning service candidates to a Pareto front;
ranking, in each Pareto front, the service candidates
based upon how close each service candidate is to a
neighbor service candidate;
generating an offspring population from the Pareto
fronts;
combining the offspring populations with the original
Pareto fronts; and
iteratively, until a predetermined number of
iterations is reached, assigning, ranking, generating, and
combining;
identifying, via a processor, an optimal set of service
selection design solutions, wherein each set comprises a plurality
of selected service candidates for each business process and
wherein the plurality of selected service candidates are optimized
based upon the conflicting service constraints and a load factor
for the services candidates, wherein the load factor is a constraint
based upon the service load and comprising an execution
parameter that varies based upon a number of business processes
accessing the corresponding service candidate;
determining a selection indicating one of the set of service
selection design solutions for implementation;
implementing one or more changes to the shared services
environment responsive to said selection, wherein the changed
shared services environment comprises a set of business process
designs that are optimized for business processes accessing the
shared services environment, thereby identifying a shared
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service for each of the plurality of tasks within the plurality of
business processes while satisfying the service constraints;
and
iteratively identifying an optimal set of service selection
design solutions, wherein the iterative identification is
responsive to receiving changes to the shared services within the
library, wherein the iteratively identifying comprises re-
identifying an optimal set of service selection design solutions
for the desired business processes in view of the changes to the
shared services within the library.
Appeal Br. 42–44 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
REJECTIONS
The following rejections are before us for review:
Claims 1–20 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter without significantly more.
Claims 1, 9, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable Kozempel, Ruetsch, and Gerovac.
Claims 4, 5, 12, 13, 18, and 19 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Kozempel, Ruetsch, Gerovac, and Pettinelli.
Claims 2, 3, 6, 7, 8, 10, 11, 14–16, and 20 is rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kozempel, Ruetsch, Gerovac, and Elad.
Name Reference Date
Pettinelli US 2005/0246165 A1 Nov. 3, 2005
Kozempel US 2008/0244518 A1 Oct. 2, 2008
Elad US 2008/0281915 A1 Nov. 13, 2008
Gerovac US 2010/0011366 A1 Jan. 14, 2010
Ruetsch US 7,742,902 B1 June 22, 2010
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OPINION
The rejection of claims 1–20 under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter without significantly more.
The Appellant argues these claims as a group. See Appeal Br. 5–24.
We select claim 1 as the representative claim for this group, and the
remaining claims 2–20 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
35 U.S.C. § 101 provides that “[w]hoever 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.”
In that regard, claim 1 covers a “process” and is thus statutory subject
matter for which a patent may be obtained.2 This is not in dispute.
However, the 35 U.S.C. § 101 provision “contains an important
implicit exception: Laws of nature, natural phenomena, and abstract ideas
are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In that regard, notwithstanding claim 1 covers statutory subject
matter, the Examiner has raised a question of patent eligibility on the ground
that claim 1 is directed to an abstract idea.

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether “the claim is to a statutory category.” 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53
(Jan. 7, 2019) (“2019 Revised 101 Guidance”). See also id. at 53–54
(“consider[] whether the claimed subject matter falls within the four
statutory categories of patentable subject matter identified by 35 U.S.C.
101.”).
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Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.
Alice step one — the “directed to” inquiry:
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S.
at 218 (emphasis added).
The Abstract Idea3
The Examiner determined, inter alia, that
this application [ ] refers to using a computer system to map and
then optimally select support services for business processes
based on certain rules. To clarify this further, the Applicant's
disclosed invention is a conceptual system meant to perform the
same function that an IT professional might perform in selecting
what applications to use in order to complete business tasks. The
abstract elements of claim 1, 9, and 17 recite in part “Accessing
a library ... Receiving business processes ... Receiving a service
constraint ... Mapping the services to the processes ... Selecting
a service ... Selecting the service by a multiple objective
optimization technique ... Identifying an optimal service design
solution ... Determine a selection of design has been made ...
Implement the selected design solution ... Iteratively identifying
an optimal set”.
Final Rej. 3–4.
Given this, the Examiner determined that the claims
are directed to the abstract ideas of “Certain methods of
organizing human activity”', or more particularly, “Concepts
relating to managing personal behavior or relationships or
interactions between people including teaching and following

3 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. 84 Fed. Reg. at 53. Step 2A is two prong inquiry.
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rules” and also “Mental Processes” or more particularly
“Concepts performed in the human mind such as evaluation and
judgement” (See MPEP 2106).
Id. at 3.
Accordingly, the Examiner has characterized claim 1 as being directed
to a business-task management concept and determined that it falls within
the enumerated “Certain methods of organizing human activity” and
“Mental processes” groupings of abstract ideas set forth in the 2019 Revised
101 Guidance.4
Appellant disagrees that the claimed subject matter is directed to an
abstract idea. However, we are unpersuaded by Appellant’s argument.
On pages 26–27 of the Appeal Brief, Appellant reproduces much of
claim 1 and then adds that “the system is able to match services for a given
business process, specifically, matching services to each of the tasks within
the business process that satisfies the service constraints even though the
matching is very complex due to a large search space and the multi-objective
nature of the service selection” (id. at 27). We assume that Appellant means
by this that the claim is directed to something different than what the
Examiner has characterized the claim as being directed to.
But in describing the invention as matching services to tasks within a
shared services environment, Appellant is mirroring the Examiner’s
explanation (Final Rej. 3–4). We note Appellant argues that “the matching is

4 This corresponds to Prong One [“Evaluate Whether the Claim Recites a
Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” 84 Fed. Reg. at 54.
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very complex due to a large search space and the multi-objective nature of
the service selection.” Appeal Br. 27. But we do not see that reflected in the
claim. Although the claimed method involves a multiple objective
optimization techniques, it is not limited to any particular level of
complexity, whether due to “a large search space and the multi-objective
nature of the service selection” or otherwise. The method manages a
“plurality” of business processes and tasks which may not necessarily be
“very complex.”
Pages 27–8 reproduce sections from the Guidance instructing
examiners to determine, inter alia, whether certain identified limitations
examiners believe recite an abstract idea fall within three subject matter
groupings of abstract ideas: “Mathematical concepts,” “Certain methods of
organizing human activity,” and “Mental processes.” Pages 28–30 argue that
“[t]he claims include multiple limitations that cannot be performed in the
mind,” and are not an “an observation, evaluation, judgment, or opinion” (id.
at 29). Thus, according to Appellant, the business-task management concept
which the Examiner indicated the claim to be directed to does not fall into
the “Mental processes” category. Similarly, pages 30–32 argue that the
business–task management concept also does not fall into the “Certain
methods of organizing human activity” category because “[t]he claims are
directed toward a system that allows for providing a selection for a shared
service” (id. at 31).
We need not ascertain whether the human mind has the capacity to
perform the business-task management concept claim 1 is directed to
because we are satisfied that the claim is directed to a concept that falls
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within the “Certain methods of organizing human activity” grouping of
abstract ideas set forth in the 2019 Revised 101 Guidance.
The Specification is replete with business-related discussion. The
purpose of the claimed subject matter is to solve business–related problems,
albeit in a shared services environment. See e.g., para. 4 (“The subject matter
described herein generally relates to systems and methods that manage
problems related to service selection for business processes in a shared
environment and for managing the end-to-end QoS [quality of service]
requirements for multiple business processes that access a shared
environment.”). Managing requirements, such as tasks, in order to ensure
“services are delivered as efficiently and effectively as possible” (id. at para.
3), notwithstanding it is being applied here in a shared services environment,
is a fundamental economic practice and as such it was reasonable for the
Examiner to classify the concept within the “Certain methods of organizing
human activity” grouping of abstract ideas set forth in the 2019 Revised 101
Guidance.
Be that as it may, the question remains: is the business-task
management concept within a shared services environment to which claim 1
is directed an abstract idea? EcoServices, LLC v. Certified Aviation
Services, LLC, 830 Fed. Appx. 634, 642 (Fed. Cir. 2020) explains the
approach we must take:
At step one of the Alice framework, “we look to whether the
claims ‘focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect
that itself is the abstract idea and merely invoke generic
processes and machinery.’ ” Cardionet, LLC v. Infobionic, Inc.,
955 F.3d 1358, 1368 (Fed. Cir. 2020) (quoting McRO, 837 F.3d
at 1314). We also consider the patent’s written description, as it
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is “helpful in illuminating what a claim is ‘directed to.’ ” Id.
(quoting Chamberlain, 935 F.3d at 1346); ChargePoint, 920
F.3d at 766.
To make that determination of what the claim is directed to, we first
consider the claim as a whole giving it the broadest reasonable construction
as one of ordinary skill in the art would have interpreted it in light of the
Specification at the time of filing.5,6,7
Claim 1 is a “computer implemented method” comprising nine steps.
The first step calls for “accessing via a processor a library comprising
a collection of available shared services for supporting a plurality of
business processes, each business process comprising a plurality of tasks”
The second step calls for “receiving a plurality of desired business
processes,” where the desired business processes comprise “a plurality of
tasks” “accessing a shared service in a shared services environment,” “at
least two of the desired business processes have tasks accessing the same
shared service in a shared mode, wherein when in the shared mode the tasks
access the same shared service concurrently.”

5 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
6 “First, it is always important to look at the actual language of the claims. .
. . . Second, in considering the roles played by individual limitations, it is
important to read the claims ‘in light of the [S]pecification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir.
2017) (J. Linn, dissenting in part and concurring in part) (citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)), among others.
7 See 2019 Revised 101 Guidance, 84 Fed. Reg No. 4 at 52 n. 14 (“If a
claim, under its broadest reasonable interpretation covers performance in
the mind but for the recitation of generic computer components, then it is
still in the mental processes category . . ..”) (emphasis added).
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The third step calls for, inter alia, a “service constraint for each of the
desired business processes.”
The fourth step “map[s], via a processor, each of the plurality of
desired business processes to more than one service candidate, wherein each
service candidate comprises one of the available shared services contained
within the library.”
The fifth step involves “selecting one of the mapped more than one
service candidate, based upon the at least one service constraint for the
plurality of desired business processes and a service load for each of the
more than one service candidate . . . using a combinatorial selection
technique, wherein the combinatorial selection technique comprises a
multiple objective optimization technique [as set forth in the claim].”
The sixth step calls for “identifying, via a processor, an optimal set of
service selection design solutions.”
The seventh step is “determining a selection indicating one of the set
of service selection design solutions for implementation.”
The eighth step “implement[s] one or more changes to the shared
services environment responsive to said selection.”
And the ninth step calls for, inter alia, “iteratively identifying an
optimal set of service selection design solutions, wherein the iterative
identification is responsive to receiving changes to the shared services
within the library.”
Putting it together, the claim recites a scheme for managing business–
tasks within a shared services environment. More particularly, it calls for,
inter alia, mapping desired business processes to shared services that
support business processes through their tasks, selecting more than one
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mapped service candidate based on a service constraint via an optimization
technique, identifying an optimal set of service selection design solutions
comprising the selected candidates, optimized based on conflicting service
constraints and a load factor for the services candidates, and implementing
changes to the shared services environment based on a service selection
design solution.
The Specification discloses the computers that may be employed to
practice said scheme as generic. See para. 84–94. The shared services
environment is also generic. Id. at paras. 1 and 2 (e.g., “cloud computing,”
“private cloud”). “[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.”
Alice, 573 U.S. at 223.
As can be seen from a plain reading of the claim, the method as
claimed is not focused on improving technology. Cf. Trading Techs. Int’l,
Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (“The claims are
focused on providing information to traders in a way that helps them process
information more quickly, ’556 patent at 2:26–39, not on improving
computers or technology.”). Rather than being directed to any specific
asserted improvement in computer capabilities, the claim supports the
opposite view — that the claimed subject matter is directed to a scheme for
managing business-tasks within a shared services environment.
The claim provides no additional structural details that would
distinguish the system required to be employed to practice the subject matter
as claimed from generic counterparts.8 While the claimed method is to be

8 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x 950, 954 (Fed.
Cir. 2018) (non-precedential) (“Claim 1 is aspirational in nature and devoid
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deployed within a shared services environment, no technical details are
provided about how the concept technologically affects that environment.
The Specification attributes no special meaning to any of the recited
operations, individually or in the combination, as claimed. In our view, the
“assessing,” “receiving”, “receiving”, “mapping,” “selecting,” “identifying,”
determining,” “implementing,” and “iteratively identifying” steps are
common computer processing functions that one of ordinary skill in the art
at the time of the invention would have known generic computers were
capable of performing and would have associated with generic computers.
Cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.
2015):
Beyond the abstract idea of offer-based price optimization, the
claims merely recite “well-understood, routine conventional
activit[ies],” either by requiring conventional computer activities
or routine data-gathering steps. Alice, [573 U.S. at 225] (quoting
Mayo, [566 U.S. at 73]) . . . . For example, claim 1 recites
“sending a first set of electronic messages over a network to
devices,” the devices being “programmed to communicate,”
storing test results in a “machine-readable medium,” and “using
a computerized system . . . to automatically determine” an
estimated outcome and setting a price. Just as in Alice, “all of
these computer functions are ‘well-understood, routine,
conventional activit[ies]’ previously known to the industry.”
Alice, [573 U.S at 225] (quoting Mayo, [566 U.S. at 73)
(alterations in original); see also buySAFE[, Inc. v. Google, Inc.],
765 F.3d [1350,] 1355 [(Fed. Cir. 2014)] (“That a computer
receives and sends the information over a network—with no
further specification—is not even arguably inventive.”).

of any implementation details or technical description that would permit us
to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court.”).
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By broadly defining the operations, that is, by setting out what the
method is aspiring to accomplish without any specific means for achieving it
(other than via generic devices), let alone any purported technological
improvement, the claim is in effect presenting the invention in purely result-
based functional language, further supporting our determination under Alice
step one that the claim is directed to an abstract idea. Cf. Two-Way Media
Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir.
2017) (“Claim 1 recites a method for routing information using result-based
functional language. The claim requires the functional results of
‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating
records,’ but does not sufficiently describe how to achieve these results in a
non-abstract way.”). See also Uniloc USA v. LG Elecs. USA, 957 F.3d 1303,
1308 (Fed. Cir. 2020):
The claims we held ineligible in Two-Way Media similarly failed
to concretely capture any improvement in computer
functionality. In Two-Way Media, the claims recited a method of
transmitting packets of information over a communications
network comprising: converting information into streams of
digital packets; routing the streams to users; controlling the
routing; and monitoring the reception of packets by the users.
874 F.3d at 1334. Two-Way Media argued that the claims solved
data transmission problems, including load management and
bottlenecking, but the claimed method was not directed to those
improvements. Id. at 1336–37. We therefore held the claims
ineligible because they merely recited a series of abstract steps
(“converting,” “routing,” “controlling,” “monitoring,” and
“accumulating records”) using “result-based functional
language” without the means for achieving any purported
technological improvement. Id. at 1337.
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Appellant does not appear to argue that the claim presents a technical-
improvement solution.9 Appellant indicates that the “the claims integrate
that judicial exception into a practical application” (id. at 35) but nothing
more is said.
In any event, we have been unable to discern a “technical”
improvement. We are unable to point to any claim language suggestive of an
improvement in technology.
Accordingly, we are unpersuaded by Appellant’s arguments that claim
1 is not directed to an abstract idea. Instead, we agree with the Examiner that
claim 1 recites a concept that falls within the enumerated “[c]ertain methods
of organizing human activity” grouping of abstract ideas set forth in the
2019 Revised 101 Guidance, and that claim 1 does not recite additional
elements that integrate the abstract idea into a practical application.
For the foregoing reasons, the record supports the Examiner’s
determination that claim 1 is directed to an abstract idea.

9 Such an argument would correspond to Prong Two [“If the Claim Recites a
Judicial Exception, Evaluate Whether the Judicial Exception Is Integrated
Into a Practical Application”] of Step 2A of the 2019 Revised 101 Guidance.
“A claim that integrates a judicial exception into a practical application will
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” 84 Fed. Reg.
at 54. One consideration, implicated here, that is “indicative that an
additional element (or combination of elements) may have integrated the
exception into a practical application” is if “[a]n additional element reflects
an improvement in the functioning of a computer, or an improvement to
other technology or technical field.” Id. at 55 (footnote omitted).
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Alice step two — Does the Claim Provide an Inventive Concept?10
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73
(2012)).
In that regard, the Examiner determined, inter alia, that the recited
computer-related “items are not significantly more because these are merely
the software and/or hardware components used to implement the abstract
idea (map and then select support services for business processes based on
certain rules) on a general purpose computer (See MPEP 2106.05(f)). This is
exemplified in the Applicant's specification in [para. 92] – ‘These computer
program instructions may be provided to a processor of a general purpose
computer.’” Final Rej. 5.
We agree.
Appellant presents its position on pages 35–37 of the Appeal Brief.
According to Appellant, “the claims provide for service selection in a shared
services environment by optimizing the selection of services in an
unconventional manner. Generally, the conventional techniques do not

10 This corresponds to Step 2B, of the 2019 Revised 101 Guidance, 84 Fed.
Reg. at 56 (“[I]f a claim has been determined to be directed to a judicial
exception under revised Step 2A, examiners should then 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).”).
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provide a technique that can take into account multiple objectives when
selecting a service.” Id. at 36.
We cited the Specification in our earlier discussion. It is intrinsic
evidence that the claimed processor and shared services environment (e.g.,
cloud computing) as claimed are conventional. In doing so, we have
followed “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP
Inc.[, 881 F.3d 1360 (Fed. Cir. 2018)],” USPTO Memorandum, Robert W.
Bahr, Deputy Commissioner For Patent Examination Policy, April 19, 2018
(the “Berkheimer Memo”)).
Appellant does not dispute that the claimed processor and shared
services environment are conventional. Instead, Appellant disputes the
conventionality of the claimed scheme as applied within a shared services
environment. What Appellant is calling not well known, routine and
conventional is the very scheme we have characterized as the abstract idea to
which the claim is directed to, not the technology. However, “a claim for a
new abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151. The novelty of the scheme does not add
significantly more to the abstract idea itself. That alone is insufficient to
transform the abstract idea into a patent-eligible inventive concept.
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 1 does not include an element or combination of elements
transforming the concept into a patent-eligible application.
We have considered all of the Appellant’s arguments (including those
made in the Reply Brief) and find them unpersuasive.
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Accordingly, because we are not persuaded as to error in the
determinations that representative claim 1, and claims 2–20, which stand or
fall with claim 1, are directed to an abstract idea and do not present an
“inventive concept,” we sustain the Examiner’s conclusion that they are
directed to patent-ineligible subject matter for being judicially-excepted
from 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow, Inc., 656 F. App’x
991, 997 (Fed. Cir. 2016) (“We have considered all of LendingTree’s
remaining arguments and have found them unpersuasive. Accordingly,
because the asserted claims of the patents in suit are directed to an abstract
idea and do not present an ‘inventive concept,’ we hold that they are directed
to ineligible subject matter under 35 U.S.C. § 101.”); see, e.g., OIP Techs.,
788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1098 (Fed. Cir. 2016).

The rejection of claims 1, 9, and 17 under 35 U.S.C. § 103(a) as
unpatentable Kozempel, Ruetsch, and Gerovac.
The difficulty with the Examiner’s rejection is that it does not
adequately address the shared services environment that the subject matter
of independent claims 1, 9, and 17 is limited to. See Final Rej. 10–14. That
is, as we understand it, at least the limitation reciting implementing changes
to the shared services environment responsive to selecting a service selection
design solution (claim 1, step 8) is not disclosed in the primary reference
Kozempel. See id. at 10–11. As Appellant points out, “Kozempel teaches a
very manual process” of selection. Appeal Br. 39 (citing para. 71 of
Kozempel (“The discoverer determines which categories are selected … .”).
The Examiner relies on Gerovac instead for the teaching of this limitation.
Appeal 2021-001181
Application 12/868,221

19
Final Rej. 10–13. Assuming arguendo that Gerovac discloses such an
implementation, the Examiner does not adequately explain why one of
ordinary skill in the art would have been led to incorporate Gerovac’s shared
services implementation in Kozempel and thereby reach the claimed subject
matter. The provided obviousness rationale (see id. 13–14) does not
adequately explain it.
For that reason, the rejection is not sustained.

The rejection of claims 4, 5, 12, 13, 18, and 19 under 35 U.S.C. § 103(a) as
unpatentable over Kozempel, Ruetsch, Gerovac, and Pettinelli.
The rejection of claims 2, 3, 6, 7, 8, 10, 11, 14–16, and 20 under 35 U.S.C. §
103(a) as unpatentable over Kozempel, Ruetsch, Gerovac, and Elad.
These rejections do not overcome the deficiency discussed above with
respect to the rejection of the independent claims. Accordingly, the
rejections of the dependent claims are not sustained for the same reason.

Appeal 2021-001181
Application 12/868,221

20
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1, 9, 17 103(a) Kozempel,
Ruetsch, Gerovac
1, 9, 17
4, 5, 12,
13, 18, 19
103(a) Kozempel,
Ruetsch, Gerovac,
Pettinelli
4, 5, 12, 13,
18, 19
2, 3, 6, 7,
8, 10, 11,
14–16, 20
103(a) Kozempel,
Ruetsch, Gerovac,
Elad
2, 3, 6, 7, 8,
10, 11, 14–
16, 20
Overall
Outcome
1–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED