ENTIT SOFTWARE LLC

Patent Trials and Appeals Board

Sep 2, 2020

2019003650 (P.T.A.B. Sep. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/266,531 04/30/2014 Vladimir Dubsky 83825696 3996
146568 7590 09/02/2020
MICRO FOCUS LLC
500 Westover Drive
#12603
Sanford, NC 27330
EXAMINER
SAEED, USMAAN
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
software.ip.mail@microfocus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VLADIMIR DUBSKY, MIROSLAV MALECHA,
and PAVEL ZAVORA
____________

Appeal 2019-003650
Application 14/266,531
Technology Center 2100
____________

Before JOHN A. JEFFERY, JAMES R. HUGHES, and
LINZY T. McCARTNEY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 1–6 and 8–20. Claim 7 was cancelled. 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. Appellant identifies the real party in interest as EntIT
Software LLC. Appeal Br. 3.
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STATEMENT OF THE CASE
Appellant’s invention (1) collects data relating to identified shortcuts,
including information relating to their associated applications, and (2) adds
this collected data to a data model corresponding to an enterprise
architecture (EA) tool. Spec. ¶ 10. Figures 3 and 4 show various
component integration models, the latter of which can be a canonical model
of application architecture from different perspectives. See Spec. ¶¶ 23–29.
The invention also determines unknown intermediaries for each identified
shortcut. Spec. ¶ 34, 44. To this end, imported information relating to the
application architecture is used to determine applications and/or interactions
that are executed when a particular shortcut is used. Spec. ¶ 44. Claim 1 is
illustrative:
1. A system comprising:

at least one processor; and

a memory storing instructions that, when executed by the at least one
processor, cause the at least one processor to:

generate a data model to represent information for an enterprise
architecture tool associated with a plurality of user perspectives and receive
a plurality of different data types to include within the data model;

define shortcut types;

identify a shortcut within the data model and categorize the identified
shortcut into the defined shortcut types; and

determine unknown intermediaries of the identified shortcut based on
the received plurality of different data types.

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THE REJECTIONS
The Examiner rejected claims 1–6 and 8–202 under 35 U.S.C. § 101
as ineligible. Final Act. 3–8.3
The Examiner rejected claims 1–6, 8–11,4 and 16–18 under 35 U.S.C.
§ 102(a)(1) as anticipated by David Basten & Dorothea Brons, EA
Frameworks, Modelling and Tools, in F. Ahlemann et al., STRATEGIC
ENTERPRISE ARCHITECTURE MANAGEMENT: CHALLENGES, BEST PRACTICES
AND FUTURE DEVELOPMENTS, 201–227 (2001) (“Basten”). Final Act. 9–15.
The Examiner rejected claims 12–15, 19, and 20 under 35 U.S.C.
§ 103 as unpatentable over Basten and J. Schekkerman, ENTERPRISE
ARCHITECTURE TOOL SELECTION GUIDE, VER. 5.0 (2009) (“Schekkerman”).
Final Act. 16–19.

THE INELIGIBILITY REJECTION
The Examiner determines that the claimed invention is directed to an
abstract idea conceptually similar to abstract ideas that merely collect and
analyze information, and display results of that collection and analysis—

2 Although the Examiner’s rejection includes claim 7, that claim was later
cancelled. See Ans. 3. We, therefore, present the corrected claim listing
here.
3 Throughout this opinion, we refer to (1) the Final Rejection mailed August
28, 2017 (“Final Act.”); (2) the Appeal Brief filed February 26, 2018
(“Appeal Br.”); (3) the Examiner’s Answer mailed June 19, 2018 (“Ans.”);
and (4) the Reply Brief filed September 12, 2018 (“Reply Br.”).
4 Although claims 8–11 were omitted from the statement of the rejection,
they were nonetheless included in the corresponding discussion. Compare
Final Act. 10 with Final Act. 12–14. Accordingly, we present the correct
claim listing here for clarity, and treat the Examiner’s error in this regard as
harmless.
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processes that can be done mentally but for the recited computer
components. See Final Act. 2–3; Ans. 3–6. According to the Examiner, the
additional recited computer elements perform generic computer functions
that do not add significantly more to the abstract idea. Final Act. 3–4; Ans.
5–6.
Appellant argues that the claims are eligible because, among other
things, they solve a technical problem, namely how to construct a data
model for an EA tool such that the tool can be used by potentially many
different users with different perspectives. See Appeal Br. 8–13; Reply Br.
1–5. Appellant adds that the Examiner fails to provide evidence or
reasoning to explain why the combination of purported generic computer
functions do not amount to significantly more than the purported judicial
exception. See Appeal Br. 12–13; Reply Br. 2–5. According to Appellant,
the Examiner’s findings in this regard, including the reliance on Basten to
show the identified additional elements, does not comply with the USPTO’s
evidentiary requirements for elements that are said to be well-understood,
routine, and conventional in the relevant field. Reply Br. 1–5.

ISSUE
Under § 101, has the Examiner erred in rejecting claims 1–6 and 8–20
as directed to ineligible subject matter? This issue turns on whether the
claims are directed to an abstract idea and, if so, whether the recited
elements—considered individually and as an ordered combination—
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transform the nature of the claims into a patent-eligible application of that
abstract idea.

PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. See, e.g., Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
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such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); 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 that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). That
said, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
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[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
In January 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of § 101. See
USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”).5 Under that guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev.
10.2019, June 2020)).
Only if a claim (1) recites a judicial exception, and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not well-understood, routine, and conventional in the field
(see MPEP § 2106.05(d)); or

5 See also October 2019 Update: Subject Matter Eligibility,
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df.
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(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.

ANALYSIS
Claims 1–6 and 8–20: Alice/Mayo Step One
Representative independent claim 1 recites:
1. A system comprising:

at least one processor; and

a memory storing instructions that, when executed by the at least one
processor, cause the at least one processor to:

generate a data model to represent information for an enterprise
architecture tool associated with a plurality of user perspectives and receive
a plurality of different data types to include within the data model;

define shortcut types;

identify a shortcut within the data model and categorize the identified
shortcut into the defined shortcut types; and

determine unknown intermediaries of the identified shortcut based on
the received plurality of different data types.

As the Specification explains, a cloud computing network can use
various tools to automate deploying, arranging, coordinating, and managing
computer systems, middleware, and associated services. Spec. ¶ 8. These
tools include EA tools that collect and model information relating to
business transactions as well as the applications and technology that
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implement those transactions. Id. To this end, EA tools organize
information via a data methodology, such as a canonical or non-canonical
model, a tree-like representation, etc. Id.
EA tools can include information from different users’ perspectives,
such as business and information technology (IT) perspectives, and different
users can add information from their perspective. See Spec. ¶¶ 9, 27–29.
This added information can include “shortcuts,” such that the information
may not fully describe the execution of various applications that perform the
shortcut. Spec. ¶ 9. Moreover, shortcuts can include “intermediaries,”
namely applications or processes that are executed from a single selection.
Id. Shortcuts can also be categorized by their type, namely those that
operate with the same or similar function. Id.
A key aspect of the disclosed invention is (1) collecting data relating
to identified shortcuts, including information relating to their associated
applications, and (2) adding this collected data to a data model
corresponding to the EA tool. Spec. ¶ 10. Figures 3 and 4 show various
component integration models, the latter of which can be a canonical model
of application architecture from different perspectives. See Spec. ¶¶ 23–29.
Another key aspect of the invention is determining unknown
intermediaries for each identified shortcut. Spec. ¶ 34, 44. To this end,
imported information relating to the application architecture is used to
determine applications and/or interactions that are executed when a
particular shortcut is used. Spec. ¶ 44.
Turning to claim 1, we first note that the claim recites a system and,
therefore, falls within the machine category of § 101. But despite falling
within this statutory category, we must still determine whether the claim is
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directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S.
at 217. To this end, we must determine whether the claim (1) recites a
judicial exception, and (2) fails to integrate the exception into a practical
application. See Guidance, 84 Fed. Reg. at 52–55. If both elements are
satisfied, the claim is directed to a judicial exception under the first step of
the Alice/Mayo test. See id.
The Examiner determines that claim 1 is directed to an abstract idea
conceptually similar to abstract ideas that merely collect and analyze
information, and display results of that collection and analysis. See Final
Act. 3–4; Ans. 3–6. To determine whether a claim recites an abstract idea,
we (1) identify the claim’s specific limitations that recite an abstract idea,
and (2) determine whether the identified limitations fall within certain
subject matter groupings, namely, (a) mathematical concepts6; (b) certain
methods of organizing human activity7; or (c) mental processes.8
Here, apart from the recited (1) “processor”; and (2) “memory storing
instructions,” all of claim 1’s recited limitations fit squarely within at least

6 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Guidance, 84
Fed. Reg. at 52.
7 Certain methods of organizing human activity include 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). See Guidance, 84 Fed. Reg. at 52.
8 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg.
at 52.
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one of the above categories of the USPTO’s guidelines. When read as a
whole, the recited limitations are directed to representing information for an
EA tool by determining processes associated with identified shortcuts.
That is, apart from the recited (1) “processor”; and (2) “memory
storing instructions,” the claimed limitations recite mental processes and
certain methods of organizing human activity including business relations
and managing personal relationships or interactions between people. See
Guidance, 84 Fed. Reg. at 52.
First, the limitation calling for “generat[ing] a data model to represent
information for an enterprise architecture tool associated with a plurality of
user perspectives” can be done entirely mentally by merely thinking about
this model or writing it down on a piece of paper. Cf. CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (noting that a
person could construct a map of credit card numbers by merely writing down
a list of credit card transactions made from a particular IP address).
We reach this conclusion despite the Specification’s paragraph 10
indicating that a data model includes data representations that can be in a
canonical model and includes non-canonical model data types.
Notwithstanding this description, the Specification does not define the term
“data model,” unlike other terms whose concrete definitions leave no doubt
as to their meaning. See, e.g., Spec. ¶¶ 14, 45 (defining “configuration file,”
“logic,” “a,” and “a number of something” explicitly).
The term “data model” is understood in the art as “[a]n abstract model
of some real-world situation or domain of interest about which information
is to be held in a database and for which the logical schema for that database
encodes.” OXFORD DICTIONARY OF COMPUTING 130 (6th ed. 2008) (“Oxford
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Computing Dictionary”) (internal quotation marks omitted). That dictionary
adds that “[t]he term data model . . . is also used for a set of logical
abstractions employed in constructing such a model.” Id.
Another special-purpose dictionary defines the term “data model,” in
pertinent part, as “[a] description of the organization of data in a manner that
reflects the information structure of an enterprise.” IBM DICTIONARY OF
COMPUTING 173 (10th ed. 1994) (“IBM Computing Dictionary”).
Given these broad definitions, a “data model,” namely (1) a set of
logical abstractions employed in constructing an abstract model of some
real-world situation or domain of interest, or (2) a description of the
organization of data in a manner reflecting an enterprise’s information
structure, can be generated entirely mentally or with pen and paper.
Therefore, the recited data model generation function falls squarely within
the mental processes category of the USPTO’s guidelines and, therefore,
recites an abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing exemplary
mental processes including observation and evaluation). That the Oxford
Computing Dictionary defines the term “data model” in terms of
abstractions, namely a set of logical abstractions that are used to construct
an abstract model only underscores that generating a data model as claimed
is an abstract idea.
Second, the limitation calling for “receiv[ing] a plurality of different
data types to include within the data model” can not only be done entirely
mentally or with pen and paper, but the data types can also be received from
others via oral or written communication. Cf. Interval Licensing LLC v.
AOL, Inc., 896 F.3d 1335, 1344 (Fed. Cir. 2018) (noting that a nontechnical
human activity of passing a note to a person who is in a meeting or
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conversation as illustrating the invention’s focus, namely providing
information to a person without interfering with the person’s primary
activity). In short, the recited receiving limitation fits squarely in the mental
processes and certain methods of organizing human activity categories of the
USPTO’s guidelines and, therefore, recites an abstract idea. See Guidance,
84 Fed. Reg. at 52 (listing exemplary methods of organizing human activity,
including personal interactions and following rules or instructions).
Lastly, the limitations calling for (1) “defin[ing] shortcut types”; (2)
“identify[ing] a shortcut within the data model and categoriz[ing] the
identified shortcut into the defined shortcut types”; and (3) “determin[ing]
unknown intermediaries of the identified shortcut based on the received
plurality of different data types” can be done entirely mentally by merely
cognitively (1) identifying the shortcuts in the data model; (2) defining
corresponding types of shortcuts, (3) categorizing the model’s shortcuts into
the defined shortcut types; and (4) determining unknown intermediaries of
the identified shortcut based on the received data types —steps that involve
involving mere observation and logical reasoning. Cf. CyberSource, 654
F.3d at 1372 (noting that a recited step that utilized a map of credit card
numbers to determine the validity of a credit card transaction could be
performed entirely mentally by merely using logical reasoning to identify a
likely instance of fraud by merely observing that numerous transactions
using different credit cards all originated from the same IP address);
Intellectual Ventures I LLC v. Erie Indemnity Company, 850 F.3d 1315 (Fed.
Cir. 2017) (holding ineligible claims reciting a system for storing and
accessing user specific resources and information including a mobile
interface including pointers that provided links to user specific resources and
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stored information); In re TLI Commc’n LLC Pat. Litig., 823 F.3d 607, 610–
14 (Fed. Cir. 2016) (holding ineligible claims reciting recording and
administering digital images including (1) recording images using a digital
pick-up unit in a telephone unit; (2) storing the recorded images; (3)
transmitting data including the images and classification information to a
server; (4) extracting the received classification information; and (5) storing
the images in the server considering that information). Therefore, the recited
shortcut type definition, shortcut identification and categorization, and
unknown intermediary determination functions fall squarely within the
mental processes category of the USPTO’s guidelines and, therefore, recite
an abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mental
processes including observation and evaluation).
Therefore, apart from the recited 1) “processor”; and (2) “memory
storing instructions,” the recited limitations fall squarely within the mental
processes and certain methods of organizing human activity categories of the
USPTO’s guidelines and, therefore, recite an abstract idea. See Guidance,
84 Fed. Reg. at 52.
Notably, the two elements enumerated above are the only recited
elements beyond the abstract idea, but these additional elements, considered
individually and in combination, do not integrate the abstract idea into a
practical application when reading claim 1 as a whole.
First, we are not persuaded that the claimed invention improves a
computer or its components’ functionality or efficiency, or otherwise
changes the way those devices function, at least in the sense contemplated
by the Federal Circuit in Enfish LLC v. Microsoft Corporation, 822 F.3d
1327 (Fed. Cir. 2016) despite Appellant’s contentions to the contrary
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(Appeal Br. 11). The claimed self-referential table in Enfish was a specific
type of data structure designed to improve the way a computer stores and
retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent Appellant
contends that the claimed invention uses such a data structure to improve a
computer’s functionality or efficiency, or otherwise change the way that
device functions, there is no persuasive evidence on this record to
substantiate such a contention.
To the extent that Appellant contends that the claimed invention is
rooted in technology because it is ostensibly directed to a technical solution
(see Appeal Br. 8–12), we disagree. Even assuming, without deciding, that
the claimed invention can represent information for an EA tool by
determining processes associated with identified shortcuts faster or more
efficiently than doing so manually, any speed or efficiency increase comes
from the capabilities of the generic computer components—not the recited
process itself. See FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d
1089, 1095 (Fed. Cir. 2016) (citing Bancorp Services, LLC v. Sun Life
Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the
required calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed subject
matter.”)); see also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F.
App’x 1012, 1017 (Fed. Cir. 2017) (non-precedential) (“Though the claims
purport to accelerate the process of finding errant files and to reduce error,
we have held that speed and accuracy increases stemming from the ordinary
capabilities of a general-purpose computer do not materially alter the patent
eligibility of the claimed subject matter.” (alteration, quotation marks, and
citation omitted)). Like the claims in FairWarning, the focus of claim 1 is
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not on an improvement in computer processors as tools, but on certain
independently abstract ideas that use generic computing components as
tools. See FairWarning, 839 F.3d at 1095.
Nor is this invention analogous to that which the court held eligible in
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016). There, the claimed process used a combined order of specific
rules that rendered information in a specific format that was applied to create
a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques—an improvement over manual three-
dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here merely represents information for an EA tool by determining
processes associated with identified shortcuts. This generic computer
implementation is not only directed to mental processes and certain methods
of organizing human activity, but also does not improve a display
mechanism as was the case in McRO. See SAP Am. v. InvestPic, LLC, 898
F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing McRO).
This is not a case where the claimed invention is necessarily rooted in
computer technology to overcome a problem arising specifically in computer
networks as was the case in DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1257 (Fed. Cir. 2014). There, instead of a computer network
operating in its normal, expected manner by sending a website visitor to a
third-party website apparently connected with a clicked advertisement, the
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claimed invention in DDR generated and directed the visitor to a hybrid page
that presented (1) product information from the third party and (2) visual
“look and feel” elements from the host website. DDR, 773 F.3d at 1258–59.
Given this particular Internet-based solution, the court held that the claimed
invention did not merely use the Internet to perform a business practice
known from the pre-Internet world, but rather was necessarily rooted in
computer technology to overcome a problem specifically arising in computer
networks. Id. at 1257.
That is not the case here. As noted previously, Appellant’s claimed
invention, in essence, represents information for an EA tool by determining
processes associated with identified shortcuts. To the extent Appellant
contends that the claimed invention is necessarily rooted in computer
technology to overcome a computer-network-based problem as was the case
in DDR, we disagree.
On this record, the claimed invention does not recite additional
elements that (1) improve a computer itself; (2) improve another technology
or technical field; (3) implement the abstract idea in conjunction with a
particular machine or manufacture that is integral to the claim; (4) transform
or reduce a particular article to a different state or thing; or (5) apply or use
the abstract idea in some other meaningful way beyond generally linking the
abstract idea’s use to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See Guidance, 84 Fed. Reg. at 55 (citing MPEP §§ 2106.05(a)–
(c), (e)). In short, the claim’s additional elements do not integrate the
abstract idea into a practical application when reading claim 1 as a whole.
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In conclusion, although the recited functions may be beneficial by
representing information for an EA tool by determining processes associated
with identified shortcuts, a claim for a useful or beneficial abstract idea is
still an abstract idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379–80 (Fed. Cir. 2015).
We, therefore, agree with the Examiner that claim 1 is directed to an
abstract idea.

Claims 1–6 and 8–20: Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim 1’s additional recited elements,
namely the recited (1) “processor”; and (2) “memory storing instructions”—
considered individually and as an ordered combination—do not provide an
inventive concept that amounts to significantly more than the abstract idea
when reading claim 1 as a whole. See Alice, 573 U.S. at 221; see also
Guidance, 84 Fed. Reg. at 56. As noted above, the claimed invention merely
uses generic computing components to implement the recited abstract idea.
To the extent Appellant contends that the recited limitations, including
those detailed above in connection with Alice step one, add significantly
more than the abstract idea to provide an inventive concept under
Alice/Mayo step two (see Appeal Br. 12–13; Reply Br. 1–5), these
limitations are not additional elements beyond the abstract idea, but rather
are directed to the abstract idea as noted previously. See BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the
Supreme Court in Alice “only assessed whether the claim limitations other
than the invention’s use of the ineligible concept to which it was directed
were well-understood, routine and conventional”) (emphasis added); see
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also Guidance, 84 Fed. Reg. at 56 (instructing that additional recited
elements should be evaluated in Alice/Mayo step two to determine whether
they (1) add specific limitations that are not well-understood, routine, and
conventional in the field, or (2) simply append well-understood, routine, and
conventional activities previously known to the industry (citing MPEP
§ 2106.05(d)).
Rather, the claimed (1) “processor”; and (2) “memory storing
instructions” are the additional recited elements whose generic computing
functionality is well-understood, routine, and conventional. See Mortgage
Grader Inc. v. First Choice Loan Services Inc., 811 F.3d 1314, 1324–25
(Fed. Cir. 2016) (noting that components such an “interface,” “network,”
and “database” are generic computer components that do not satisfy the
inventive concept requirement); accord Spec. ¶¶ 79–90; Final Act. 5
(determining that the recited generic computer components, including the
recited processor and memory, are additional elements that do not add
significantly more than the abstract idea).
Appellant’s contention that the Examiner allegedly did not comply
with the evidentiary requirements under the April 2018 USPTO
memorandum mandating these requirements for ineligibility rejections after
Berkheimer v. HP, Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (Reply Br. 2–
5) is unavailing, at least regarding one of the Examiner’s alternative
determinations in that regard. To be sure, the Examiner must show—with
supporting facts—that certain claim elements are well-understood, routine,
and conventional where such a finding is made. See Berkheimer, 881 F.3d
at 1369 (noting that whether something is well-understood, routine, and
conventional to a skilled artisan at the time of the invention is a factual
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determination). In light of this factual determination, the USPTO issued a
memorandum requiring that Examiners support a finding that an additional
element of a claim is well-understood, routine, and conventional. Robert W.
Bahr, Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.), USPTO, Apr. 19, 2018 (“Berkheimer Memo.”), at 2–3 (noting that the
Berkheimer decision clarifies the inquiry whether an additional element (or
combination of additional elements) represents well-understood, routine, and
conventional activity).
As noted previously, the recited (1) “processor”; and (2) “memory
storing instructions” are the additional recited elements whose generic
computing functionality is well-understood, routine, and conventional.
To be sure, the Examiner’s finding that the recited functions of the
abstract idea, including the data model generation, shortcut identification
and categorization, and unknown intermediary determination functions were
well-understood, routine, and conventional (Final Act. 4; Ans. 4–7) is not
evidenced on this record sufficiently to comply with the Berkheimer
memorandum as Appellant indicates. Reply Br. 2–5.
Nevertheless, we see no error in the Examiner’s alternative
determination that the elements beyond the abstract idea, namely the
processor and memory, are generic computer components whose generic
computer functionality is well-understood, routine, and conventional. See
Final Act. 5. Notably, in this alternative determination, the Examiner states
clearly and unambiguously what elements constitute the abstract idea,
namely (1) generating a data model to represent information for an
enterprise architecture tool associated with a plurality of user perspectives;
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(2) receiving different data types; (3) defining shortcut types; (4) identifying
shortcut types within the data model; (5) categorizing the shortcut into the
shortcut types; and (6) determining unknown intermediaries based on the
data types. See Final Act. 5. The Examiner also articulates explicitly the
additional elements under this alternative determination, namely the generic
computer components, the first two of which are the processor and memory
of claim 1. See id. Notably, this alternative articulation is consistent with
our determination of the particular limitations of claim 1 that (1) recite the
abstract idea, and (2) are additional elements beyond the abstract idea when
applying the USPTO’s Revised 101 Guidance detailed previously.
Although we are persuaded of error in the Examiner’s ineligibility
rejection to the extent that it is based on determining that the elements
comprising the abstract idea are well-understood, routine, and conventional,
we nonetheless see no error in the Examiner’s alternative determination
where the identified additional elements are the generic computing
components whose generic computing functionality is well-understood,
routine, and conventional. See Final Act. 5.
In short, Appellant’s contention that the Examiner failed to provide
evidence that elements of the abstract idea are well-understood, routine, and
conventional (see Reply Br. 1–5) has merit for one of the Examiner’s
alternative determinations. Nevertheless, Appellant’s arguments are not
commensurate with the more limited scope of the Examiner’s findings in
connection with the Examiner’s other alternative determination, namely that
the elements other than the abstract idea, namely the additional computer-
based elements, have generic computing functionality that is well-
understood, routine, and conventional. See Final Act. 5.
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As noted previously, there is ample evidence of this generic
computing functionality in not only the cited case law, but also Appellant’s
own Specification. See, e.g., Fair Warning, 839 F.3d at 1096 (noting that
using generic computing components like a microprocessor or user interface
do not transform an otherwise abstract idea into eligible subject matter);
Spec. ¶¶ 1, 11–22, 45 (describing generic computer components used to
implement the invention). Therefore, the additional recited elements do not
add significantly more than the abstract idea to render the claim patent-
eligible.
In conclusion, the additional recited elements—considered
individually and as an ordered combination—do not add significantly more
than the abstract idea to provide an inventive concept under Alice/Mayo step
two when reading claim 1 as a whole. See Alice, 573 U.S. at 221; see also
Guidance, 84 Fed. Reg. at 56.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2–6 and 8–20 not argued separately with particularity.

THE ANTICIPATION REJECTION
The Examiner finds that Basten discloses every recited element of
independent claim 1 including determining unknown intermediaries of an
identified shortcut, namely the macros or scripts that automate common
functions or actions or group several functions into one action. Final Act.
10–11. According to the Examiner, this functionality also determines
unknown intermediaries of the identified shortcut based on the received data
types as claimed. Final Act. 11; Ans. 8–9.
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Appellant argues that Basten does not categorize an identified shortcut
into defined shortcut types, let alone determine unknown intermediaries of
the identified shortcut based on received data types as claimed. Appeal Br.
13–15; Reply Br. 6–7.

ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Basten determines unknown intermediaries of an identified shortcut
based on received different data types?

ANALYSIS
We begin by construing the key disputed limitation of claim 1 that
recites, in pertinent part, determining unknown intermediaries. The
Specification does not define the term “unknown intermediaries,” unlike
other terms whose concrete definitions leave no doubt as to their meaning.
See, e.g., Spec. ¶¶ 14, 45 (defining “configuration file,” “logic,” “a,” and “a
number of something” explicitly).
The Specification does, however, explain that intermediaries include
executed applications and/or executed processes, and that unknown
intermediaries (e.g., executed applications, executed processes, etc.) are
determined by using information within received data types. Spec. ¶¶ 9, 16.
Our emphasis on the exemplary and open-ended terms “e.g.” and “etc.” in
paragraph 16 underscores that the term “unknown intermediaries” is not
limited to executed applications and processes, but rather encompasses
additional undisclosed “unknown intermediaries.” See Spec. ¶¶ 34–36, 44
(noting that determining unknown intermediaries uses imported information
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to determine applications and/or interactions that are executed when a
particular shortcut is used).
Notably, a key aspect of these determined intermediaries is that they
are unknown. That is, the intermediaries were unknown before their
determination. See Spec. 36 (noting that the generated data model can
include previously unknown shortcut intermediaries).
In other words, claim 1 does not require merely determining an
identified shortcut’s intermediaries, but rather those that were previously
unknown. Given this key qualification, we cannot say—nor has the
Examiner shown—that Basten necessarily determines an identified
shortcut’s unknown intermediaries as claimed.
We reach this conclusion even assuming, without deciding, that (1)
creating macros or scripts to automate common functions or actions, and (2)
grouping several functions into one action on Basten’s page 221 determines
intermediaries of an identified shortcut based on received data types as the
Examiner apparently finds. See Final Act. 11; Ans. 8–9. That is, even if
these macros, scripts, and grouped functions result from determining a
shortcut’s intermediaries, namely associated executed processes and
applications, that does not mean that these intermediaries were necessarily
unknown—a key qualifier of the recited intermediary determination.
That the Examiner acknowledges that Basten’s EA tool not only
knows where imported information came from, but is also aware of
functions that are grouped (Ans. 9) only further undermines the notion that
this functionality necessarily determines unknown intermediaries as claimed.
If anything, the intermediaries associated with Basten’s functionality are
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already known—not unknown. To the extent that the Examiner finds
otherwise, there is no evidence on this record to substantiate such a finding.
We reach this conclusion even if it was probable that Basten
determines unknown intermediaries by creating macros and scripts and
grouping functions on page 221, for that is still insufficient for anticipation
that requires that all claimed elements be necessarily present in the
reference—which they are not. See In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999) (“Inherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” (quotation marks and citations omitted)).
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 1; (2) independent claim 8 that recites commensurate
limitations; and (3) dependent claims 2–6, 9–11, and 16–18 for similar
reasons. Because this issue is dispositive regarding our reversing the
Examiner’s rejection of these claims, we need not address Appellant’s other
associated arguments.

THE OBVIOUSNESS REJECTION
Because the Examiner has not shown that Schekkerman cures the
deficiencies noted above regarding the anticipation rejection, we do not
sustain the obviousness rejection of claims 12–15, 19, and 20 (Final Act. 16–
19 ) for similar reasons.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
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1–6, 8–
20
101 Eligibility 1–6, 8–20
1–6, 8–
11, 16–
18
102(a)(1) Basten 1–6, 8–11,
16–18
12–15,
19, 20
103 Basten,
Schekkerman
12–15, 19,
20
Overall
Outcome
1–6, 8–20

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)(1).

AFFIRMED