Carl J. Reed et al.

Patent Trials and Appeals Board

Dec 31, 2019

13909873 - (D) (P.T.A.B. Dec. 31, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/909,873 06/04/2013 Carl J. Reed GOLD11-00438 3656
132787 7590 12/31/2019
Docket Clerk-GOLD
P.O. Drawer 800889
Dallas, TX 75380
EXAMINER
KRINGEN, MICHELLE THERESE
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
12/31/2019 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):
patents@munckwilson.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CARL J. REED and CHARLES KLEIN
____________

Appeal 2018-001703
Application 13/909,873
Technology center 3600
____________

Before JOHN A. EVANS, CARL L. SILVERMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final rejection of Claims 1–7, 9–17, 19, and 21. Appeal Br. 3.
Claims 8, 18, 20, and 22–28 are cancelled. Id. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.2

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42 (2016). Appellant identifies Goldman, Sachs & Co., as the
real party in interest. Appeal Br. 3.
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed May 22, 2017, “Appeal Br.”); the Reply
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STATEMENT OF THE CASE
The claims relate to systems and methods for a product driven
approach to technology provisioning operations. See Abstract.

INVENTION
Claims 1, 9, and 19 are independent. An understanding of the
invention can be derived from a reading of Claim 1, which is reproduced in
Table I, infra.

References and Rejections3
Bellows US 5,132,920 July 21, 1992
Li US 2006/0111963 A1 May 25, 2006
Burrell US 2007/0226122 A1 Sept. 27, 2007
Benedetti US 2008/0168459 A1 July 10, 2008
Hirose US 2010/0005451 A1 Jan. 7, 2010
Dettinger US 2011/0270866 A1 Nov. 3, 2011
Marsten US 8,078,489 B1 Dec. 13, 2011

1. Claims 1–7, 9–17, 19, and 21 stand rejected under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter. Final Act. 2–5.

Brief (filed December 6, 2017, “Reply Br.”); the Examiner’s Answer
(mailed October 6, 2017, “Ans.”); the Final Action (mailed December 30,
2016, “Final Act.”); and the Specification (filed June 4, 2013, “Spec.”) for
their respective details.
3 The Application was examined under pre-AIA first inventor provisions.
Final Act. 2.
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2. Claims 1–3, 6, 7, 9, 10, 16, and 174 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Marsten and Hirose. Final
Act. 6–39.
3. Claims 4, 5, 13, and 15 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Marsten, Hirose, and Bellows. Final Act. 39–44.
4. Claim 11 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Marsten, Hirose, and Li. Final Act. 44–45.
5. Claims 12 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Marsten, Hirose, and Benedetti. Final Act. 46–50.
6. Claims 19 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Marsten, Hirose, Dettinger, and Burrell. Final
Act. 50–58.

ANALYSIS
We have reviewed the rejections of Claims 1–7, 9–17, 19, and 21 in
light of Appellant’s arguments that the Examiner erred. We are persuaded
that Appellant identifies reversible error. We provide the following
explanation to highlight and address specific arguments and findings
primarily for emphasis. We consider Appellant’s arguments presented in the
Appeal Brief, pages 6–16.
CLAIMS 1, 9, AND 19: INELIGIBLE SUBJECT MATTER
Appellant argues the independent claims as a group with particular
reference to the similar recursion limitations recited in each claim. See

4 The rejections of Claims 22–28, as recited in various rejection headers, is
mooted by their cancellation. See Appeal Br. 3.
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Appeal Br. 7–8. Therefore, we decide the appeal of the 35 U.S.C. § 101
rejections with reference to independent Claim 1, and refer to the rejected
claims collectively herein as “the claims.” See 37 C.F.R. § 41.37(c)(1)(iv);
see also In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).

PRINCIPLES OF LAW
A. 35 U.S.C. § 101
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.5
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
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,

5 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 patent-eligibility
inquiry under 35 U.S.C. § 101.
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include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; see also 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. (15
How.) 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at
69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “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, 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. at 191 (citing
Benson and Flook), 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.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
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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.”).
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. (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 Guidance6
The PTO recently published revised guidance in the Federal Register
concerning the application of § 101.
Under the Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain

6 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(January 7, 2019) (hereinafter “Revised Guidance,” or “Rev. Guid.”)
(https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf).
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groupings of abstract ideas (i.e., mathematical concepts,
certain methods of organizing human activity such as a
fundamental economic practice, or mental processes);7 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)).8
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 are not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial
exception.9
See Revised Guidance.
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

7 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
8 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
9 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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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).
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 rare situations identified in the Revised Guidance.10
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

10 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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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 individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified “practical application” sections of the MPEP,11
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
(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

11 See MPEP § 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017].
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Environment
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. If not, then analysis proceeds to Step 2B.
Step 2B — “Inventive Concept” or “Significantly More”
Under our 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 a judicial exception is recited in
a separate claim element.12 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).13 Therefore, if a claim has been determined
to be directed to a judicial exception under Revised Step 2A, we must
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).14

12 See, e.g., Diehr, 450 U.S. at 187.
13 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,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
14 The patent-eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
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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,
III.B.15
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

(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).
15 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 (shown on next page). 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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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.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) 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
(b) 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.
Revised Guidance, and see Berkheimer Memo.
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.
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However, if a determination is made that the element and combination
of elements does 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.
ANALYSIS
Step 1
“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 . . . .” MPEP § 2104 (quoting 35 U.S.C.
§ 101).
Independent Claim 1 recites, inter alia, a “computer-implemented
method”; Independent Claims 9 and 19 recite, inter alia, a “system.” Thus,
independent Claim 1 is a process and Claims 9 and 19 are machines under
§ 101. Therefore, the issue before us is whether the claims, despite reciting
a statutory class, are nonetheless directed to a judicial exception without
significantly more. At Step 1, we disagree with the Examiner’s finding that
the “[t]he claims do not fall within at least one of the four categories of
patent eligible subject matter because the claimed invention is directed to a
judicial exception.” Final Act. 2. That is, contrary to the Examiner, we find
the claims fall in a statutory category, but further inquire whether the claims
are none-the-less patent ineligible as directed to a judicial exception.
Step 2A(i): Do the Claims Recite a Judicial Exception?
We review the claims, de novo, to determine whether they comply
with 101. “Whether a claim is drawn to patent-eligible subject matter is an
issue of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade
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Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010).
The preamble of Claim 1 recites a “computer-implemented method
comprising.” The remaining limitations of Claim 1 are set forth in the left
column of Table I and analyzed according to the Revised Guidance in the
right column.

Table I
Claim 1 Revised Guidance
[a]16 receiving, through a portal, a
product ordering request that
specifies a set of features and
functional requirements desired by a
requestor;
An additional element, data-
gathering, that adds insignificant
extra-solution activity. Rev. Guid.
55, n.31.
[b] accessing a recursive model
stored in memory to match the set of
features and functional requirements
to a provisionable assembly that
satisfies the set of features and
functional requirements;
Mental processes—concepts
performed in the human mind.17
(including an observation,
evaluation, judgment, opinion).
Rev. Guid. 52, n.12.
[c] determining, based on the Methods of organizing human

16 Step designators, e.g., “[a]” were added to facilitate discussion.
17 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 unless the claim
cannot practically be performed in the mind. See Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the
exception of generic computer-implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper.”).
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recursive model, a set of constituent
components to create the
provisionable assembly; and
behavior including fundamental
economic principles and practices.
Rev. Guid. 52, n.13.
[d] generating, using a processor, a
request to provision a product based
on the set of constituent
components;
Mental processes—concepts
performed in the human mind.
(including an observation,
evaluation, judgment, opinion).
[e] wherein determining the set of
constituent components comprises
minimizing a total cost of the
provisionable assembly to be
created using the set of constituent
components.
Mathematical concepts:
mathematical relationships,
formulas, equations, or calculations.
Rev. Guid. 52, n.12.

Thus, under Step 2A(i), we find limitations [b]–[e] recite steps which
the Revised Guidance categorizes within the “mental processes,”
“mathematical concepts,” and “methods of organizing human behavior”
groupings of abstract ideas.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims recite a patent-ineligible concept, 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.
The Revised Guidance is “designed to more accurately and consistently
identify claims that recite a practical application of a judicial exception []
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and thus are not ‘directed to’ a judicial exception.” Revised Guidance 53.
The Examiner finds the claims “are directed to a method and systems
for provisioning products, which is considered to be an abstract idea.
Provisioning products is a method of organizing human activity, and a
mathematical relationship/formula.” Final Act. 3.
The Examiner finds receiving product ordering requests, determining
constituent components, generating requests to provision products, and
provisioning products, are considered managing relationships or
transactions, and are also considered sales activities that have been identified
by the Federal Circuit as abstract ideas. Final Act. 3 (citing buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)). The Examiner further
finds:
Applicant’s specification states “Recently, waste management
companies have emerged that combine the benefits of both the
independent local haulers and the larger multi-regional
operators. These companies consider the waste service needs of
various customers, and select and manage a combination of
local independent and multi-regional service providers to
satisfy the service needs of those customers. Generally, the
waste management companies select a particular service
provider for each customer based directly on the service needs
of the customer, a provider cost, a customer budget, or a service
location. The selection process, however, is manually
implemented and can be cumbersome, time-consuming,
inefficient, and error-prone.” (Spec, [0004]). This indicates that
the process can be, and has been, performed by waste
management companies in the past using the same method.
Ans. 9–10 (citing Spec. ¶ 4).
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Appellant contends that the Specification nowhere discusses waste
management and that the “Examiner is apparently making arguments related
to another patent application, which is clear error.” Reply Br. 9.
Contrary to the Examiner’s findings, Appellant discloses:
As the demands for the use of various technologies
evolve, there have been increasing burdens placed on the
support and management of these systems. Moreover, the
ongoing evolution of IT as a recognized business differentiator
has been a major factor in driving ever increasing industry
investment and innovation. Further, the evolution of IT has
made it difficult for the end users or consumers of the
technology to keep abreast of technological advancements. The
resulting diversity of technology solutions combined with
increasing demand from technology users has produced an
unprecedented pressure on the enterprise to manage its
technology assets and services as a core business. Like any
other business, IT needs to provide its “clients” with the
“products” and “services” they demand with agility, cost
transparency, efficiency, and abstraction from technical
complexity.
Spec. ¶ 4. This misquotation of Appellant’s Specification diminishes our
confidence in any findings based thereon (we note a word search of the
Specification failed to find the term “waste”).
Appellant contends a product catalogue may be silent on whether a
device has a particular capability for which a client may search. Appeal
Br. 10. Appellant argues the prior art resolves the query by using a
catalogue to build a highly detailed and unwieldly model by specifying
whether each device in the catalogue has a particular capability. Id. (“[o]ne
approach to resolving the query could be to build a more detailed model
using the catalogue by specifying whether each device in the catalogue has a
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particular capability. Such a level of detail model could be unwieldy”).
Appellant argues buySAFE merely recited steps of receiving and processing
a request, but failed to specify how such processing might occur. Reply
Br. 3. Appellant argues, in contrast, the claims use recursion to enable
inference and generalization to resolve the query with a less detailed product
model using compact domain rules. Id. at 5 (citing Spec. ¶¶ 45, 48, 49).
The Answer re-iterates the Final Action findings and further finds a
recursive model is a mathematical formula. Ans. 4 (citing Digitech Image
Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014)).
For the reasons which follow, we conclude that Appellant’s claims in
fact do integrate the judicial exception into a practical application.

MPEP § 2106.05(a) “Improvements to the Functioning of a Computer
or To Any Other Technology or Technical Field.”
“In determining patent eligibility, examiners should consider whether
the claim ‘purport(s) to improve the functioning of the computer itself’” or
“any other technology or technical field.” MPEP § 2106.05(a).
McRO
With respect to technological improvements, Appellant argues in
McRO, the Federal Circuit found “a claim that uses limited rules in a process
specifically designed to achieve an improved technological result in
conventional industry practice is not directed to an abstract idea.” Reply
Br. 6 (citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299
(2016)). Appellant argues that analogously to McRO, the claims invoke
limited rules involving a stored recursive model to determine a minimized-
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cost set of components to provide a required set of features and functional
requirements. Id. at 7.
Appellant discloses an example provisionable search which might
yield certain inference rules. Spec. ¶ 45. Appellant discloses “Unified
Modeling Language (UML) is a popular formalism for modeling structures
of basic concepts and relationships,” but that certain types of inferential
rules cannot be formally represented by a UML model. Spec. ¶ 47.
Appellant discloses the “most effective modeling formalisms with available
implementation platforms are ontology languages” the Common Logic (CL)
class of languages, of which two varieties have full implementations in
integrated knowledge store and query and inference engines and also have
the broad range of features that allow product modelers to express all of the
key types of catalog model detail. Spec. ¶ 48. “CL is the only type of
implemented modeling language that offers a substantial degree of second
order logical expressive power. Second order expressions allow the system
to state rules about all classes, or all relationships, of a certain type.” Spec.
¶ 50. Appellant discloses these second order expressions allow generating
queries from external (i.e., vendor) catalogues. Spec. ¶ 52.
We find, the claimed “automation goes beyond merely ‘organizing
[existing] information into a new form’ or carrying out a fundamental
economic practice. The claimed process uses a combined order of specific
rules that renders information into a specific format that is then used and
applied to create desired results,” i.e., an improvement to search engine
technology. McRO, 837 F.3d at 1315 (citations omitted). In view of the
foregoing, we find the claims are not “directed to” their underlying abstract
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ideas and are thus patent eligible. We reverse the rejection of Claims 1–7,
9–17, 19, and 21 under 35 U.S.C. § 101.

CLAIMS 1–7, 9–17, 19, AND 21: OBVIOUSNESS OVER
MARSTEN, HIROSE, DETTINGER, AND BURRELL.
Recursive model.
The Examiner finds Marsten generally teaches the claimed invention
except for failing to explicitly teach a recursive model. Final Act. 9. The
Examiner finds Marsten teaches “neighborhoods of similar configurations”
which by “reconfiguration relations” “capture” other configurations. Id. at
9–10. The Examiner finds “[r]econfiguration could be interpreted as the
model being recursive.” Id. at 10.
Appellant contends neither “reconfiguration,” nor searching for new
patterns, show or render obvious the repeated application of a rule,
definition, or procedure to successive results. Appeal Br. 14. The Answer
does not find contrary to Appellant’s contention. See Ans. 20 (“However,
Marsten does not teach a recursive model, and recursively decomposing.
Examiner turns to Hirose to teach the model is recursive.”) (emphasis
omitted).
Appellant contends “recursion used for creating software applications,
as discussed in Hirose, does not render obvious a multi-dimensional model
that recursively maps products into a set of constituent components.”
Appeal Br. 15. Appellant argues:
a function that can recursively call itself, as used for creating
software applications, does not render obvious how to
recursively map products into constituent components, such as
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recursively determining that a Nokia Lumia 900 has Windows
Phone 7 as its factory installed operating system, that the Office
Mobile program is designed to run on the Windows Phone 7
operating system, and that the Excel Mobile program is a
subprogram of the Office Mobile program.
Id. (citing Spec. ¶ 45).
The Examiner finds Hirose “teaches recursively decomposing.”
Ans. 21. The Examiner finds “Hirose teaches ‘Architectures that enable the
creation of software applications through the assembly of components have
become more complex, and some standards such as Service Component
Architecture (SCA) allow recursive composition, wherein even individual
components can recursively be created through the use of other
components.’” Id. The Examiner interprets “[r]ecursively creating
components” “as recursively decomposing.” Id.
Appellant contends Hirose discloses creating “applications
recursively, which is to say that each of the components used to build an
application can itself be built using components.” Reply Br. 14 (quoting
Hirose ¶ 6). Appellant argues Hirose also discloses “recursive composition,
wherein even individual components can recursively be created through the
use of other components.” Id. (quoting Hirose ¶ 22). Appellant argues
recursion as taught by Hirose is a process by which a component may be
created by using other components. Id. But, Appellant argues, Hirose does
not disclose or suggest recursively decomposing or mapping a product into a
set of constituent components. Id. Appellant contends “[c]reating a
component using other components is the exact opposite of recursively
decomposing or mapping a product into a set of constituent components.”
Id.
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First, as argued by Appellant, the Examiner provides no evidence to
support the finding that “[r]ecursively creating components” is the same as
“recursively decomposing.” See Ans. 21. Second, as argued by Appellant,
the Examiner provides no evidence to support a finding that creating a
known, product from known substituents is a process equivalent to its
inverse, i.e., determining the (not necessarily known) substituents of a given
product.
Because the prior art fails to teach at least one claimed limitation, we
decline to sustain the rejection of Claims 1–7, 9–17, 19, and 21 under
35 U.S.C. § 103.
DECISION
The rejection of Claims 1–7, 9–17, 19, and 21 under 35 U.S.C. § 101
is reversed.
The rejection of Claims 1–7, 9–17, 19, and 21 under 35 U.S.C. § 103
is reversed.

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 9–17,
19, 21
101 Abstract Ideas 1–7, 9–17,
19, 21
1–7, 9–17,
19, 21
103 Marsten, Hirose,
Bellows, Li,
Benedetti, Burrell
1–7, 9–17,
19, 21
Overall
Outcome
1–7, 9–17,
19, 21

REVERSED