DANGEVILLE, NICOLAS et al.

Patent Trials and Appeals Board

Jul 1, 2020

2019002705 (P.T.A.B. Jul. 1, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/316,624 12/12/2011 NICOLAS DANGEVILLE FR920080218US2
8152-0159
2880
73109 7590 07/01/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
SHAH, KAMINI S
ART UNIT PAPER NUMBER
2127
NOTIFICATION DATE DELIVERY MODE
07/01/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICOLAS DANGEVILLE and JOHAN PONIN
Appeal 2019-002705
Application 13/316,624
Technology Center 2100
Before JOHN A. EVANS, SCOTT B. HOWARD, and JASON M. REPKO,
Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 7, 8, 10–13, 15, and 16. Appeal. Br. 1. Claims 1–6
are canceled. Claims 9 and 14 are not rejected. 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). According to Appellant, the real party in interest is “IBM
Corporation.” Appeal Br. 1.
Appeal 2019-002705
Application 13/316,624

2
CLAIMED SUBJECT MATTER
Appellant’s invention modifies a diagram that shows resources and
data manipulated by a program. Abstract. Specifically, software can be
described by a visual language, such as Unified Modeling Language (UML).
Spec. ¶ 4. A UML class diagram often represents a program to be written in
an object-oriented programming language. Id. The actual program code is
then derived from the UML class diagrams. Id. Appellant’s invention adds
new elements to a UML class diagram and allows for code generation in a
procedural language, such as COBOL. Abstract.
Claims 7 and 12 are independent. Claim 7 is reproduced below.
1. A computer-implemented method of representing a
software application to be coded in a procedural language,
comprising
receiving an initial UML class diagram modelizing the
software application;
identifying data definition classes within the initial UML
class diagram;
identifying class operations within the initial UML class
diagram; and
modifying, by a processor, the initial UML class diagram
to generate an extended UML class diagram by
applying a data object stereotype to the identified
data definition classes, and
applying a program stereotype to the identified
class operations, wherein
the data definition classes represent logical data, and
the class operations represents programs.
Appeal 2019-002705
Application 13/316,624

3
Appeal Br. 17 (Claims Appendix).2
REJECTIONS
The Examiner rejects claims 7, 8, 10–13, 15, and 16 under 35 U.S.C.
§ 101 as directed to ineligible subject matter. Final 4–7.
OPINION
I. Principles of Law
Under § 101, patent-eligible subject matter is defined as “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” 35 U.S.C. § 101. But courts have long
held that laws of nature, natural phenomena, and abstract ideas are not
patentable. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 70–71 (2012) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)).
These ineligible concepts are implicit exceptions to the statutory categories.
Id. at 71.
The Supreme Court articulated a two-step subject-matter eligibility
test in Mayo and Alice Corp. v. CLS Bank International, 573 U.S. 208
(2014). Alice/Mayo step one asks whether a claim is “directed to” a judicial
exception. Alice, 573 U.S. at 217. In Alice/Mayo step two, we consider “the
elements of each claim both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the nature of the

2 Throughout this opinion, we refer to the Final Office Action (“Final”),
mailed March 16, 2018; the Appeal Brief (“Appeal Br.”), filed August 20,
2018; the Examiner’s Answer (“Ans.”), mailed January 8, 2019; and Reply
Brief (“Reply Br.”), filed February 19, 2019.
Appeal 2019-002705
Application 13/316,624

4
claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79,
78). Step two is described as a search for an “inventive concept.” Id.
The USPTO has published revised guidance on patent subject matter
eligibility. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”).3 Step 1 of the USPTO’s eligibility
analysis asks whether the claimed subject matter falls within the four
statutory categories of invention. Id. at 53–54. Under Step 2A, Prong One of
the Guidance, we determine if the claim recites a judicial exception,
including particular groupings of abstract ideas (i.e., mathematical concepts,
certain methods of organizing human activity, or mental processes). Id. at
52–53. If so, we then analyze the claim to determine whether the recited
judicial exception is integrated into a practical application under Step 2A,
Prong Two of the Guidance. Id. at 53–55; MPEP §§ 2106.05(a)–(c), (e)–(h)
(9th ed. Rev. 08.2017, Jan. 2018).
Only if the claim fails to integrate the exception and, thus, is “directed
to” the judicial exception, do we then look to whether the claim adds a
specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional activity in the field” or whether the claim
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. Guidance, 84 Fed. Reg. at 56.

3 In response to public comments, the Office issued additional guidance on
October 17, 2019. October 2019 Update: Subject Matter Eligibility (USPTO
Oct. 17, 2019), https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf (“October 2019 Update”).
Appeal 2019-002705
Application 13/316,624

5
II. Overview of the Rejection and Appellant’s Arguments
In the Examiner’s view, representative4 claim 7 is directed to an
abstract idea. Final 4. The Examiner determines that the claims are similar to
those in Gottschalk v. Benson, 409 U.S. 63 (1972). Id. at 6. Apart from the
abstract idea, the Examiner finds that the recited processor is conventional.
Id. at 4–5 (citing Spec. ¶¶ 24, 35, 48). According to the Examiner, claim 7
does not recite an improvement to technology. Ans. 6.
Appellant argues that the claimed invention does improve computer
technology. Appeal Br. 6–7. According to Appellant, software developers
use a UML class diagram for designing programs, and the claimed invention
is directed to “a series of rules that improve upon prior art UML class
diagrams by extending them.” Id. at 12. Appellant makes other arguments
discussed in detail below.
III. Step 1: Does the claim fall within a statutory category of invention?
Under Step 1 of the USPTO’s eligibility analysis, the claimed subject
matter falls within one of the four statutory categories of invention because
claim 7 recites a process. Guidance, 84 Fed. Reg. at 53–54. In particular,
claim 7 recites a series of steps for representing a software application.
IV. Step 2A, Prong One of the Guidance
We next consider whether claim 7 recites a judicial exception. Id. at
51. “[A] claim recites a judicial exception when the judicial exception is ‘set
forth’ or ‘described’ in the claim.” October 2019 Update 1.

4 Appellant argues claims 7, 8, 10–13, 15, and 16 as a group. See Appeal Br.
6. Claim 7 is representative of that group. Id. (stating “claims 8–16 stand or
fall together with independent claim 7”); 37 C.F.R. § 41.37(c)(1)(iv).
Appeal 2019-002705
Application 13/316,624

6
The Guidance synthesizes the key concepts identified by the courts as
abstract ideas into three primary subject-matter groupings: mathematical
concepts, certain methods of organizing human activities, and mental
processes. 84 Fed. Reg. at 52.
The Examiner’s rejection predates the Guidance.5 Nevertheless, the
Examiner determines that the claims are similar to those in Gottschalk v.
Benson, 409 U.S. 63 (1972). Final 6. In Benson, the court concluded that a
person could mentally perform the recited conversion. 409 U.S. at 67 (“The
conversion of BCD numerals to pure binary numerals can be done mentally
through use of the foregoing table.”). Similarly, the Examiner here explains
how claim 7 merely modifies and manipulates data from one form to
another. Final 5. Viewing the rejection through the lens of the Guidance, the
Examiner has shown that the subject matter of claim 7 falls in the
Guidance’s mental-processes grouping. See id. at 4–6. In the sections that
follow, we explain why we agree with the Examiner’s determination.
1. Identifying Classes
Claim 7 recites, in part, “identifying data definition classes within the
initial UML class diagram,” and “identifying class operations within the
initial UML class diagram.” Appeal Br. 17 (Claims Appendix).
Identifying these classes and operations are observations or
evaluations that can practically be performed in the mind. In particular,
UML visually describes a program. See Spec. ¶ 4. So a person with an
understanding of UML can review the diagram’s visual elements and

5 The USPTO issued The 2019 Revised Patent Subject Matter Eligibility
Guidance on January 7, 2019. The Examiner’s rejection was mailed on
March 16, 2018.
Appeal 2019-002705
Application 13/316,624

7
determine which elements are the data-definition classes, class operations,
among other things.
The Specification supports interpreting the identifying steps as a
person’s evaluations and observations. For example, the Specification states,
“an architect identifies amongst the classes of the UML class diagram, the
ones that contain operations that represent a program.” Id. at ¶ 46 (emphasis
added). Likewise, the Specification further explains how an architect
examines the operation’s parameters,
In step 340, the architect examines a parameter of the program.
He will consider whether the parameter represents a resource of
the program (such as a file) or not (step 341).
Id. ¶ 54 (emphasis added).
Thus, the step of “identifying data definition classes within the initial
UML class diagram” and “identifying class operations within the initial
UML class diagram” are part of the recited mental process.
2. Applying Stereotypes / Modifying the Diagram
Claim 7 further recites, in part,
modifying, by a processor, the initial UML class diagram
to generate an extended UML class diagram by
applying a data object stereotype to the identified
data definition classes, and
applying a program stereotype to the identified
class operations, wherein
the data definition classes represent logical data, and
the class operations represents programs.
Appeal Br. 17 (Claims Appendix).
Appeal 2019-002705
Application 13/316,624

8
An example UML class diagram is shown below.6

In the UML diagram above, the DataObject stereotype has been
applied to Customer, Order, and CustomerProfile. Spec. ¶ 57. As for the
recited “class operations,” the class called “CustService” has two: GetOrders
and ShowOrderedProducts. Id. Because GetOrders has been identified as a
program, the Program stereotype has been applied to it. Id. Considering this
disclosure (id.), modifying the diagram by applying the stereotype
encompasses a person performing the claimed steps mentally with the
assistance of pencil and paper.

6 Figure 4 is substantially similar to Figure 4 of the parent application
12/247,339. We show parent application’s Figure 4 here for clarity because
the diagram is more legible.
Appeal 2019-002705
Application 13/316,624

9
According to Appellant, a UML class diagram is a data structure.
Appeal Br. 8; see also Appeal Br. 12; Reply Br. 3–5 (discussing an
improved data structure). To be sure, a computer can be used to create and
modify a diagram. But it is not required. Rather, a UML diagram itself can
be a printed image. See Final 5 (discussing non-functional descriptive
material). The recited modifications to the diagram essentially convert a
UML diagram to another type of UML diagram (i.e., the “extended UML
diagram”).
Similarly, the Federal Circuit has held that a claim to “translating a
functional description of a logic circuit into a hardware component
description of the logic circuit” was directed to an abstract idea because the
claim “read on an individual performing the claimed steps mentally or with
pencil and paper.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1139, 1149 (Fed. Cir. 2016), cited in Guidance, 84 Fed. Reg. at 53 n.15.
Likewise, claim 7 recites a mental process that translates one description to
another. See Final 5 (discussing how the claims are directed to modifying the
UML). Thus, the step of modifying, by a processor, the initial UML class
diagram to generate an extended UML class diagram is part of the recited
mental process.
For all the above reasons, claim 7 recites an abstract idea.
V. Step 2A, Prong Two of the Guidance
Because claim 7 recites an abstract idea, we now proceed to determine
whether the recited judicial exception is integrated into a practical
application. Guidance, 84 Fed. Reg. at 51. When a claim recites a judicial
exception and fails to integrate the exception into a practical application, the
claim is “directed to” the judicial exception. Id.
Appeal 2019-002705
Application 13/316,624

10
We use the term additional elements for claim features, limitations, or
steps that the claim recites beyond the identified judicial exception. See id. at
55 n.24. In claim 7, the additional elements are (1) “receiving an initial
UML class diagram modelizing the software application” and (2) a
processor to modify “the initial UML class diagram to generate an extended
UML class diagram.”
1. Receiving the Diagram
Claim 7 recites, in part, “receiving an initial UML class diagram
modelizing the software application.” Appeal Br. 17 (Claims Appendix).
The Guidance explains that a series of data gathering steps that collect
a necessary input for an abstract idea can be insignificant extra-solution
activity in Step 2A. Guidance, 84 Fed. Reg. at 56 (citing OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)). Similarly, the
receiving step recited in claim 7 is claimed generically. In the context of
claim 7 as a whole, the UML diagram is a necessary input to the rest of the
method. So the receiving step here is insignificant extra-solution activity and
does not indicate that the judicial exception is integrated into a practical
application.
2. The Processor
Claim 7 recites, in part, “modifying, by a processor, the initial UML
class diagram to generate an extended UML class diagram.” Appeal Br. 17
(Claims Appendix).
An additional element may integrate a judicial exception into a
practical application when, for example, the “additional element implements
a judicial exception with, or uses a judicial exception in conjunction with, a
Appeal 2019-002705
Application 13/316,624

11
particular machine or manufacture that is integral to the claim.” Guidance,
84 Fed. Reg. at 55.
In this case, claim 7 lacks such a machine. Claim 7 does not recite any
details about the processor. Rather, the recited processor encompasses a
general-purpose processor that simply executes the mental process described
above. Supra § IV. A general-purpose processor that merely executes the
judicial exception is not a particular machine. See Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 716–17 (Fed. Cir. 2014), cited in MPEP § 2106.05(b)(I).
Essentially, the claimed processor is used as a tool to perform an otherwise
mental process. Thus, the processor limitation does not indicate that the
judicial exception is integrated into a practical application.
3. The Combination
Appellant argues that the claimed invention improves computer
technology. Appeal Br. 6–7. Appellant asserts that UML has not been used
with procedural languages. Id. at 9. According to Appellant, the claimed
invention extends UML’s functionality to procedural languages. Id.
Appellant characterizes this extended functionality as “a solution to a
problem in the software arts.” Id. In Appellant’s view, the UML diagram “is
a tool by which software is generated, which constitutes ‘computer
technology.’” Reply Br. 2.
The Specification describes that software developers use the UML
diagram for modeling. Spec. ¶ 4. Traditionally, procedural languages are
represented with a flow chart. Id. ¶ 5. UML is commonly used for object-
oriented languages. Id. ¶ 4. Being able to represent procedural languages in
UML would create a uniform representation for things across an enterprise.
Id. ¶ 6.
Appeal 2019-002705
Application 13/316,624

12
To be sure, the UML diagrams are eventually used to derive the actual
programming code. Id. ¶ 4. Yet claim 7 does not recite deriving the code.
See Final 5 (discussing how the claimed entities are not implemented).
Instead, we agree with the Examiner that the claimed invention is merely
directed to modifying the diagram. See id. For instance, the Appeal Brief
stated that the claimed invention is directed to a “series of rules that improve
upon prior art UML class diagrams by extending them.” Appeal Br. 12
(emphasis added). That is, the purported improvement is to the diagram. See
Spec. ¶ 6.
As discussed above, modifying the diagram is part of the mental
process. Supra § IV. Even when viewed in combination, the additional
elements do no more than automate that mental process. There is no change
to the processor or other technology other than automating the abstract idea.
So claim 7 does not improve computer technology or functionality in a way
that indicates that the recited judicial exception is integrated into a practical
application. See Final 5 (explaining that the claims are not directed to
improving technology).
Thus, the claim is directed to the judicial exception.
VI. Step 2B of the Guidance
Under step 2B, we determine whether a claim provides an inventive
concept. Guidance, 84 Fed. Reg. at 56. To this end, we consider the
additional elements—individually and in combination—to determine
whether they (1) add a specific limitation beyond the judicial exception that
is not well-understood, routine, and conventional in the field or (2) simply
append well-understood, routine, and conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
Appeal 2019-002705
Application 13/316,624

13
exception. Id. Also, we reevaluate our conclusions about the additional
elements discussed in the previous step. Id.
As discussed in Step 2A, Prong Two, claim 7’s additional elements
are (1) “receiving an initial UML class diagram modelizing the software
application” and (2) a processor to modify “the initial UML class diagram to
generate an extended UML class diagram.”
1. Receiving the Diagram
Claim 7 recites, in part, “receiving an initial UML class diagram
modelizing the software application.” Appeal Br. 17 (Claims Appendix).
Of relevance to this step, in OIP Techs., the Federal Circuit
determined that “routine data-gathering” was well-understood, routine, and
conventional activity in the claims at issue. 788 F.3d at 1363; see also
Content Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d
1343, 1347 (Fed. Cir. 2014) (“The concept of data collection . . . is
undisputedly well-known.”). In claim 7, the receiving step merely collects
the data for the remaining steps. An architect can simply use a computer to
read the data into a software program. See Spec. ¶ 48 (discussing using IBM
Rational Software Architect), cited in Final 4. Here, the Specification
indicates that the receiving step is routine data gathering. Thus, the receiving
step is well-understood, routine, and conventional.
2. The Processor
Claim 7 recites, in part, “modifying, by a processor, the initial UML
class diagram to generate an extended UML class diagram.” Appeal Br. 17
(Claims Appendix).
Using a computer “only for its most basic function, the performance
of repetitive calculations,” may not impose meaningful limits on the claim’s
Appeal 2019-002705
Application 13/316,624

14
scope. Bancorp Servs. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012). Similarly, the MPEP instructs examiners that
courts recognize that using a computer for performing repetitive calculations
may be well‐understood, routine, and conventional when claimed
generically. MPEP § 2106.05(d)(II)(ii) (citing Parker v. Flook, 437 U.S.
584, 594 (1978); Bancorp, 687 F.3d at 1278).
Here, we agree with the Examiner that the processor is generic. See
Final 4 (citing Spec. ¶¶ 24, 35, 48). The processor merely executes the
abstract idea. See id. at 5. For instance, according to the Specification, the
method can be embodied as a program executing on a computer.
Spec. ¶¶ 24, 35, 48. These paragraphs indicate that the processor is part of
that general-purpose computer. Final 5. Thus, we agree with the Examiner
that the recited processor is well-understood, routine, and conventional. Id.
3. Conclusion to Step 2B
Because the additional elements add nothing more than well-
understood, routine, and conventional activity, our conclusions about
whether the recited additional elements integrate the abstract idea into a
practical application stand. See Guidance, 84 Fed. Reg. at 56. Considering
both our previous conclusions and the findings about well‐understood,
routine, and conventional activity, we determine that the claim does not
provide an inventive concept.
VII. Summary
Appellant has not persuaded us of error in the rejection of
representative claim 7 under 35 U.S.C. § 101. Thus, we sustain the rejection.
We also sustain the rejection of claims 8, 10–13, 15, and 16, which are not
argued separately. See supra n.4.
Appeal 2019-002705
Application 13/316,624

15

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7, 8, 10–13,
15, 16
101 Eligibility 7, 8, 10–13,
15, 16

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

AFFIRMED