Erik Eidt et al.

Patent Trials and Appeals Board

Apr 3, 2020

12262017 - (D) (P.T.A.B. Apr. 3, 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.
12/262,017 10/30/2008 Erik Eidt 82242845 5406
146568 7590 04/03/2020
MICRO FOCUS LLC
500 Westover Drive
#12603
Sanford, NC 27330
EXAMINER
GLASS, RUSSELL S
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
04/03/2020 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 ERIK EIDT, MATHIAS SALLE, MATTHEW NEWMAN,
SAMEER VAIDYA, JACK S. WALICKI, RUSSELL DANIELS, and
CHRISTOPHER PELTZ
____________

Appeal 2018-004963
Application 12/262,017
Technology Center 3600
____________

Before BRADLEY W. BAUMEISTER, KEVIN W. CHERRY, and
JASON M. REPKO, Administrative Patent Judges.

CHERRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 11–13 and 15–22. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.

1 We use the term “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, a limited liability company established under the laws of the State of
Delaware and having a principal place of business at 1140 Enterprise Way,
Bldg. G, Sunnyvale, CA 94089, U.S.A. (hereinafter ‘EntIT’). EntIT is a
wholly-owned affiliate of Micro Focus International Plc, headquartered in
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CLAIMED INVENTION
The claimed invention relates to method, systems, and computer
products for “services lifecycle management.” Spec. ¶ 4. Claims 11 and 16
are independent. Claim 11 is a method claim, and claim 16 recites a non-
transitory computer medium that when executed on computer performs
substantially the same steps as recited in claim 11. Independent claim 11 is
representative of the appealed claims.2 Claim 11 is reproduced below with
paragraph numbering added for clarity and emphasis added to the claim
language that recites an abstract idea:
11. A method for managing services comprising:
[(i)] capturing declarative specifications of the services as
service models;
[(ii)] combining the service models into a plurality of service
offerings to provide a catalog of orderable services;
[(iii)] receiving an order for at least one orderable service
selectable from the catalog of orderable services;
[(iv)] in response to receiving the order, initiating instantiating
the at least one orderable service to generate an instantiated ordered
service, the initiating instantiating including automatically resolving
one or more dependencies of the at least one orderable service; and

Newbury, United Kingdom.” Appeal Br. 1. Our decision references
Appellant’s Appeal Brief (“Appeal Br.,” filed October 18, 2017),
Appellant’s Reply Brief (“Reply Br.,” filed April 10, 2018), the Examiner’s
Answer (“Ans.,” mailed February 12, 2018), and Final Office Action (“Final
Act.,” mailed June 16, 2017).
2 Although Appellant nominally argues claims 16–22 separately from
claims 11–13 and 15 (Appeal Br. 4, 11), the arguments presented for
claims 16–22 are substantially the same as those presented for claim 11–13
and 15. Accordingly, we treat claims 11–13 and 15–22 as a single claim
grouping and select claim 11 as representative of this group. See 37 C.F.R.
§ 41.37(c)(1)(iv).

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[(v)] fulfilling the order in accordance with the instantiated
ordered service, thereby generating a tangible information
technology (IT) artifact in an IT infrastructure.
(Appeal Br. 14, Claims App. i).
REJECTION
Claims 11–13 and 15–22 are rejected under 35 U.S.C. § 101 as
directed to an exception to patent-eligible subject matter without reciting
significantly more.3
PRINCIPLES OF LAW
Under 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. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements

3 The Examiner rejected claims 11–13 and 15–22 under § 101 as
incorporating a transitory medium, such as a signal. Final Act. 3. The
Examiner has withdrawn the transitory medium rejection. Ans. 2.
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of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 78, 79). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
After Appellant’s briefs were filed and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019 for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7,
2019) (the “2019 Revised Guidance”); updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“October 2019
Guidance Update”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October 2019 Guidance Update). The 2019 Revised
Guidance revised the USPTO’s examination procedure with respect to the
first step of the Mayo/Alice framework by (1) “[p]roviding groupings of
subject matter that [are] considered an abstract idea”; and (2) clarifying that
a claim is not “directed to” a judicial exception if the judicial exception is
integrated into a practical application of that exception. Id. at 50. The
2019 Revised Guidance, by its terms, applies to all applications, and to all
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patents resulting from applications, filed before, on, or after January 7, 2019.
Id.4
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54.
If so, we next consider whether the claim includes additional
elements, beyond the judicial exception, that “integrate the [judicial]
exception into a practical application,” i.e., that apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.

4 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will be addressed only to the extent those arguments are consistent
with the 2019 Revised Guidance.
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Only if the claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application do we conclude that the
claim is “directed to” the judicial exception, e.g., an abstract idea. In such a
case, we then proceed to step 2B of the 2019 Revised Guidance and 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 (4) simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception. 2019 Revised
Guidance, 84 Fed. Reg. at 56.

ANALYSIS
Subject Matter Analysis
Before addressing the merits of the rejection, we first analyze the
meaning of various relevant claim terms.
Appellant’s Specification is entitled “AN ARCHITECTURE FOR
INSTANTIATING INFORMATION TECHNOLOGY SERVICES,” and
describes, in the Background section, that “information technology (IT)
organizations have increasingly adopted standards and best practices to
ensure efficient IT service delivery” and that “the IT Infrastructure Library
(ITIL) has been rapidly adopted as the de facto standard.” Spec. ¶ 2. ITIL
“defines a set of standard processes for the management of IT service
delivery organized in processes for Service Delivery.” Id.
Appellant’s Specification describes the invention as “[m]ethods,
systems, and computer program products are provided for services lifecycle
management,” and purports to disclose “[a] services architecture provides a
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plurality of services that are capable of being ordered.” Id. ¶ 4. The
Specification defines a “service” as “[u]tility or benefit provided by a
provider to a consumer” and “IT services” as “any application that enables
the enterprise to provide utility or benefit by adding functionality to the IT
infrastructure.” Id. ¶ 11.
The Specification further explains that an “architecture” is simply a
“blueprint or basic infrastructure designed to provide one or more
functions,” and the architecture used in an IT environment “may typically
include hardware, software and services building blocks that are designed to
work with each other to deliver core functions and extensible functions.” Id.
¶ 8.
The Specification describes that in the method or system a design
service captures declarative specifications of services as service models. Id.
¶ 4. Although the Specification does not describe in any detail how the
service “captures” the specifications, it does explain that the “design service
. . . may include design tools . . . and techniques (such as declarative
programming) available to a designer or an architect of IT services to
manage the lifecycle of the models from initial design to cataloging to
refinement.” Id. ¶ 29.
The Specification also defines a “model” as “a representation of the
characteristics and behavior of a system, element, solution, or service.” Id.
¶ 9. The Specification further explains that “[a] model as described herein
captures the design of a particular IT system, element, solution, or service.
The model can be a declarative specification of the structural, functional,
non-functional, and runtime characteristics of the IT system, element,
solution, or service.” Id.
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The Specification also describes that a catalog service receives the
service models and combines the service models into a plurality of service
offerings to provide a catalog of orderable services. Id. ¶ 4. According to
the Specification, an order configuration service receives an order for at least
one orderable service selectable from the catalog of orderable services. Id.
The Specification explains that the catalog service communicates with the
design service to access new services that have not been previously
catalogued and combines the new services with previously catalogued
services to provide a catalogue. Id. ¶ 30.
The Specification explains that “[e]nd users may access the features of
the configure-to-order system . . . through the catalog service 240 and an
order processing service (OPS) . . . to browse, search, select, configure, and
order the type of service model to be created and ordered or the type of
changes desired to an existing model,” and that “to simplify the user
interface, the catalog service . . . may filter model information provided to
the user.” Id. ¶ 31.
The Specification also describes that the system and method includes
an order processing service that instantiates the at least one orderable service
in two phases, thereby generating an instantiated ordered service. Id. ¶ 4.
According to the Specification, an order fulfillment service fulfills the order
in accordance with the instantiated ordered service. Id.
More particularly, the Specification explains that
instantiation of a service model can be conducted in two
phases—a binding phase and a grounding phase. The binding
phase can be responsible for resolving dependencies between
models. The grounding phase can be responsible for
materializing the instances, e.g., by creating an IT artifact
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corresponding to the specification defined in the service model
instance.
Id. ¶ 12.
“An IT artifact refers to a tangible attribute or property of an IT
system. Examples of an IT artifact may include hardware, software,
documentation, source code, test apparatus, project plans, educational and
marketing material, and similar others. The IT artifact may be available for
external or internal use.” Id. ¶ 10.
The Specification explains that
[i]n the binding phase . . . inter-model dependencies, e.g., made
by a model to other models, can be resolved. An output of the
binding phase . . . is a bound model instance . . . . The binding
phase . . . may be viewed to provide a dynamic linking between
model instances. Dependencies to other models can be abstract,
refined or very specific and the binding phase . . . resolves
these types of model references by reusing existing instances or
creating new instances. The binding phase can be inherently
recursive in that the binding of a dependent model can itself
trigger a binding of its dependencies.
Id. ¶ 25.
The Specification further explains that “[t]he order fulfillment service
. . . includes a creation and configuration service (CCS) . . . operable to
perform the grounding phase [] of instantiated ordered service . . . .” Id.
¶ 33.
Step 2A, Prong One, of the 2019 Revised Guidance
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether the claim recites 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). 84 Fed. Reg. at 52–54. “[A] claim recites a judicial
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exception when the judicial exception is ‘set forth’ or ‘described’ in the
claim.” October 2019 Update: Subject Matter Eligibility, 1 (Oct. 2019)
https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf.
Independent claim 11 recites a method of managing services. As we
explained above, the Specification defines a “service” as anything that
provides utility or benefit to a consumer. Spec. ¶ 10.
Limitation (i) recites “capturing declarative specifications of the
services as service models.” As discussed above, the Specification describes
“capturing,” in the context of designer or an architect of IT services using a
“design tool” to enter data into the IT system. Spec. ¶ 29. This step recites
an interaction between people. For example, in a commercial interaction, a
home builder may ask a customer about specifications for a new home.
Spec. ¶ 17. Similarly, capturing declarative specifications describes an
interaction between an IT service provider and a customer. The
2019 Revised Guidance expressly recognizes this type of certain method of
organizing human activity as constituting a patent-ineligible abstract idea.
84 Fed. Reg. at 52.
Receiving the recited data alternatively can practically be performed
in the human mind by observation. The 2019 Revised Guidance also
recognizes mental processes, including observations, as constituting a
patent-ineligible abstract idea. Id.
Accordingly, limitation (i) describes a patent-ineligible abstract idea.
Limitation (ii) recites “combining the service models into a plurality
of service offerings to provide a catalog of orderable services.” This step
describes a commercial interaction or business relations. In a commercial
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interaction, a home builder, for instance, may provide a customer with
standard build-to-order homes in a catalog of offerings. See Spec. ¶ 17.
Limitation (ii) describes a similar relationship and interaction in the context
of IT services.
This step also describes a mental process. It common for businesses
to combine offerings into a catalog. Indeed, the Specification describes how
this process is analogous “builder that is capable of building standard model
homes that are orderable as a build-to-order home and an architect designed
home that is capable of building a customized home in accordance with user
specifications and that is orderable as a configure-to-order home.” Spec. ¶
17. The Specification explains that just as with the claimed catalog “[n]ew
features or functions of the configure-to-order home that were not included
in the standard build-to-order home may be cataloged (with known price and
delivery) and offered as re-usable features or functions that may be
combined with existing model homes.” Spec. ¶ 17. So the combining step
recites a process that can be practically performed in the human mind. The
2019 Revised Guidance also recognizes mental processes, including
evaluations and judgments, as constituting a patent-ineligible abstract idea.
84 Fed. Reg. at 52. Accordingly, limitation (ii) recites a patent-ineligible
abstract idea.
Limitation (iii) recites “receiving an order for at least one orderable
service selectable from the catalog of orderable services.” As discussed
above, the Specification describes “receiving an order,” in the context of
selecting a service from a catalog. Spec. ¶ 31. Receiving the order can
practically be performed in the human mind in the same way as
limitation (i). Also, for the same reasons as limitation (i), receiving an order
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describes a certain method of organizing human activity that the
2019 Revised Guidance expressly recognizes as constituting a patent-
ineligible abstract idea. 84 Fed. Reg. at 52. Accordingly, limitation (iii)
recites a patent-ineligible abstract idea.
Limitation (iv) recites “in response to receiving the order, initiating
instantiating the at least one orderable service to generate an instantiated
ordered service, the initiating instantiating including automatically resolving
one or more dependencies of the at least one orderable service.” As
discussed above, the Specification describes “resolving one or more
dependencies,” as a recursive process of resolving the links between
different models. Spec. ¶ 25. The Specification explains the “list of services
may be described to perform a generic service (for aggregating data across
data services), a data service (for the management of lifecycle of specific
data models), a computational service (for the execution of business logic)
or a combination thereof.” Spec. ¶ 39.
One of the particular examples of a “service” that can be managed
using the method is “sales forecasting service,” which is described as “a
daily worldwide sales pipeline report and analysis for senior
sales management.” Spec. ¶ 37. In that case, resolving the dependencies, as
claimed, includes collecting the data from other services in the IT
infrastructure to allow such a report to be generated. For the same reasons
as limitation (i), this step of collecting data about services describes either a
certain method of organizing human activity or a mental process that the
2019 Revised Guidance expressly recognizes as constituting a patent-
ineligible abstract idea. 84 Fed. Reg. at 52. Accordingly, limitation (iv)
recites a patent-ineligible abstract idea.
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Limitation (v) recites “fulfilling the order in accordance with the
instantiated ordered service, thereby generating a tangible information
technology (IT) artifact in an IT infrastructure.” As discussed above, the
Specification defines an IT artifact very broadly as “a tangible attribute or
property of an IT system.” Spec. ¶ 10.5 This step describes subject matter
relating to sales activities and business relations. Commercial business
relations typically culminate with the delivery of tangible artifact—e.g., a
builder delivering a home to a customer that was constructed to
specification. See Spec. ¶ 17.
Accordingly, limitation (v) recites a patent-ineligible abstract idea.
For these reasons, each of limitations (i) through (v) reasonably can be
characterized as reciting a judicial exception to patent-eligible subject matter
under step 2A, prong 1, of the 2019 Revised Guidance.
Step 2A, Prong Two, of the 2019 Revised Guidance
Having concluded that claim 11 recites a judicial exception, i.e., an
abstract idea, we next consider under step 2A, prong 2, of the 2019 Revised
Guidance whether claim 11 recites additional elements that individually or
in combination integrate the judicial exception into a practical application.
2019 Revised Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance
provides exemplary considerations that are indicative of an additional
element or combination of elements integrating the judicial exception into a
practical application, such as an additional element reflecting an
improvement in the functioning of a computer or an improvement to other
technology or technical field. Id. at 55; MPEP § 2106.05(a).

5 The originally filed Specification numbers both of two consecutive
paragraphs as paragraph 10. We refer to the first of these two paragraphs.
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In rejecting the pending claim 11 under 35 U.S.C. § 101, the
Examiner determines that independent claim 11 is directed to “managing IT
services because the dependencies that are automatically resolved resulting
in an instantiated ordered service are nothing more than rules programmed
into the software necessary to fulfill a plurality of ordered service offerings.”
Ans. 3. The Examiner characterizes this subject matter as “a certain method
of organizing human activity and/or idea of itself.” Final Act. 3. The
Examiner further determines that claim 11 does not include “meaningful
limitation[s]” that “amounts to significantly more than the abstract idea
itself.” Id. at 3–4.
Appellant argues that claim 11 is directed to an improvement in
technology and that the Examiner failed to consider the ordered combination
of the elements of the claim. Appeal Br. 6–7. For example, relying on
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016) and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, (Fed.
Cir. 2016), Appellant contends claim 11 is directed to an improvement in
technology. Appeal Br. 6. In particular, Appellant submits that claim 11 is
directed to improving service delivery using an IT infrastructure. Id. at 7.
Appellant asserts that a person of ordinary skill in the art “would understand
that service delivery using an IT infrastructure is an important technology
that can be used in various different contexts, such as service delivery from a
cloud system, from a server system. . . .” Id. at 7. Appellant argues that
“[d]elivering the instantiated ordered service to an entity that provided the
order also improves computer functionality at the entity that receives the
instantiated ordered service, since the instantiated ordered service performs
computing tasks for the entity.” Id.
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The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, the Specification (including the claim
language) makes clear that the claims focus on an abstract idea, and not on
any improvement to technology and/or a technical field.
The only additional element recited in claim 11, such that these
additional elements generally links the use of the judicial exception to a
particular technological environment or field of use is that the method is
performed in an IT infrastructure—elements that, as the Examiner observed,
is disclosed in the Specification as generic computer components (Final Act.
3; Ans. 3; see also, e.g., Spec. ¶¶ 23, 47–48; 84 Fed. Reg. at 55; MPEP
2106.05(h)).
We find no persuasive indication in the Specification that the
operations recited in claim 11 require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, invoke any
assertedly inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
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doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”).
We also find no persuasive indication in the Specification that the
claimed invention effects a transformation or reduction of a particular article
to a different state or thing. Nor do we find anything of record, short of
attorney argument, that attributes an improvement in technology and/or a
technical field to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the 2019 Revised Guidance.6
As the Background section of the Specification makes clear, line IT
service standards are a long-standing part of the providing IT services
(Spec. ¶¶ 2–3). Moreover, the Specification makes clear that the claimed
service models, dependencies, and IT artifacts broadly include generating
sales reports and other “business logic.” Id. ¶ 37. There is no contention
that one would have been unable to prepare such “services” manually.
The “mere automation of manual processes using generic computers
does not constitute a patentable improvement in computer technology.”
Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed.
Cir. 2017); see also Univ. of Fla. Res. Found, Inc. v. Gen. Elec. Co., 916
F.3d 1363, 1367 (Fed. Cir. 2019) (“This is a quintessential ‘do it on a

6 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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computer’ patent: it acknowledges that data from bedside machines was
previously collected, analyzed, manipulated, and displayed manually, and it
simply proposes doing so with a computer.
We have held such claims are directed to abstract ideas.”); Apple, Inc.
v. Ameranth, Inc., 842 F.3d 1229, 1242–43 (Fed. Cir. 2016) (“The patents
can readily be understood as adding conventional computer components to
well-known business practices. . . . The Supreme Court and this court have
repeatedly determined that such claims are invalid under § 101. . . . It is not
enough to point to conventional applications and say ‘do it on a computer.’”
(citations omitted)); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372 (Fed. Cir. 2011) (holding that a claim whose “steps can be
performed in the human mind, or by a human using a pen and paper” is
directed to an “unpatentable mental process[ ]”).
Indeed, the Specification explains that many of the steps are
performed, at least in part, by the human using the computer. See, e.g.,
Spec. ¶ 29 (describing “capturing” in terms of programming by a designer or
IT architect); ¶ 37 (describing business services provided by the system and
method); ¶ 39 (describing services as including “aggregating data across
data services,” “a data service (for the management of lifecycle of specific
data models),” and “a computational service (for the execution of business
logic) or a combination thereof”).
Thus, we are not persuaded that the claimed method does anything
more than use generic computers as tools, and does not constitute the kind of
improvement in computer functionality that is patent eligible.
Appellant asserts that the Examiner oversimplifies the claims (Appeal
Br. 7). We disagree. As we explained above, the claims are cast in very
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broad terms, which the Specification either defines very broadly (e.g.,
“service,” “service model,” or “IT artifact”) or describes very broadly (e.g.,
examples Paragraph 37). Thus, this is not a case of the Examiner over-
simplifying, but rather, the Appellant’s choice to define the invention
broadly.
We also disagree with Appellant’s comparison of the claimed
invention to the claimed invention in McRO. Appeal Br. 6; Reply Br. 2.
Appellant’s claim 11 is unlike the claims in McRO. The patent at issue in
McRO describes that, prior to the claimed invention, character animation and
lip synchronization were accomplished by human animators with the
assistance of a computer, and involved the use of a so-called “keyframe”
approach in which animators set appropriate parameters, i.e., morph weights,
at certain important times, i.e., in order to produce accurate and realistic lip
synchronization and facial expressions. McRO, 837 F.3d. at 1305.
Animators knew what phoneme a character pronounced at a given
time from a time-aligned phonetic transcription (a “timed transcript”). Id. In
accordance with the prior technique, animators, using a computer, manually
determined the appropriate morph weight sets for each keyframe based on
the phoneme timings in the timed transcript. Id.
Thus, in McRO, the improvement in computer animation was realized
by using “rules, rather than artists [i.e., human animators], to set the morph
weights and transitions between phonemes” (id. at 1313 (citation omitted)),
i.e., in McRO, the invention used “rules to automatically set a keyframe at
the correct point to depict more realistic speech, achieving results similar to
those previously achieved manually by animators.” Id. at 1307. The rules in
McRO, thus, allowed the computer to solve a technological problem by
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producing accurate and realistic synchronization in animated characters that
could only previously be produced by humans.
In contrast with McRO, Appellant does not identify any specific rules
in the claim that are used by the claimed processor to solve a technological
problem, let alone identify specific rules that act in the same way as the
specific rules enabling the computer in McRO to generate computer
animated characters. Rather, as claimed, Appellant’s invention merely
abstractly claims the process of managing IT services.
No technological rules are identified in the claim; rather the claims
merely require broadly that a model be “instantiated,” “dependencies
resolved,” and an IT artifact generated. Reply Br. 3. As we have explained,
the Specification casts these terms extremely broadly such that they
encompass ordinary business processes—data collection and report
generation. We, therefore, find insufficient evidence of record to support
Appellant’s argument that claim 11 is similar to the claim in McRO, where
computers were unable to make certain subjective determinations, i.e.,
regarding morph weight and phoneme timings, which could only be made
prior to the McRO invention by human animators.
We conclude, for the reasons outlined above, that claim 11 recites a
method of organizing human activity and mental processes, i.e., an abstract
idea, and that the additional elements recited in the claim are no more than
generic components used as tools to perform the recited abstract idea. As
such, they not integrate the abstract idea into a practical application. See
Alice Corp., 573 U.S. at 223–24 (“[W]holly generic computer
implementation is not generally the sort of ‘additional featur[e]’ that
provides any ‘practical assurance that the process is more than a drafting
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effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo,
566 U.S. at 77)).
Accordingly, Appellant has not established that the Examiner erred in
determining that claim 11 is directed to an abstract idea.
Step 2B of the 2019 Revised Guidance
Having determined under step 2A, prong 2, of the 2019 Revised
Guidance that claim 11 is directed to an abstract idea, we next consider
under Step 2B whether claim 1 includes additional elements or a
combination of elements that provides an “inventive concept,” i.e., whether
an additional element or combination of elements adds specific limitations
beyond the judicial exception that are not “well-understood, routine,
conventional activity” in the field (which is indicative that an inventive
concept is present) or simply appends well-understood, routine, conventional
activities previously known to the industry to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 56.
Appellant asserts here that the § 101 rejection cannot be sustained
because claim 11 is “clearly inventive over the cited art,” and because the
“presence of this inventive subject matter that improves upon the relevant
technology . . . is sufficient to transform the claim into a patent-eligible
application.” Appeal Br. 10.
In its Reply, Appellant argues that it recognized that “that it would be
desirable to provide a service architecture that would include . . . techniques
to initially design, reuse, maintain, and refine services during their entire
lifecycle, thereby ensuring alignment between IT services and
IT infrastructure.” Reply Br. 12 (quoting Spec. ¶ 16). Additionally,
Appellant asserts that claim 11 has an inventive concept because it is a non-
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conventional and non-generic arrangement of known, conventional pieces.
Id. (citing BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016)).
Appellant’s argument regarding the alleged novelty of the claimed
invention is not persuasive at least because “the relevant inquiry is not
whether the claimed invention as a whole is unconventional or non-routine,”
BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018),
i.e., whether the claimed process merely automates “some well-known,
routine, conventional activity that would otherwise be the same as the
claimed process.” Instead, the question under step two of the Mayo/Alice
framework (i.e., step 2B of the 2019 Revised Guidance) is whether the claim
includes additional elements, i.e., elements other than the abstract idea itself,
that “‘transform the nature of the claim’ into a patent-eligible application.”
Alice Corp., 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78). See also
Mayo, 566 U.S. at 72–73 (requiring that “a process that focuses upon the use
of a natural law also contain other elements or a combination of elements,
sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
natural law itself” (emphasis added)).
Appellant refers to the entirety of claim 11. Yet, as we found above,
the steps recited in claim 11 encompass the abstract idea itself. The claim
steps are not limited to the recitation of additional elements that are to be
considered when determining whether claim 11 amounts to significantly
more than the judicial exception.
It could not be clearer from Alice, that under step 2B of the
2019 Revised Guidance, the elements of each claim are considered both
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individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
“transform the nature of the claim” into a patent-eligible application.
Alice Corp., 573 U.S. at 217 (internal quotations and citation omitted);
see also Mayo, 566 U.S. at 72–73 (requiring that “a process that focuses
upon the use of a natural law also contain other elements or a combination
of elements, sometimes referred to as an ‘inventive concept,’ sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the natural law itself” (emphasis added)).
In other words,
[i]t is clear from Mayo that the “inventive concept” cannot be
the abstract idea itself, and Berkheimer . . . leave[s] untouched
the numerous cases from this court which have held claims
ineligible because the only alleged “inventive concept” is the
abstract idea.
Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring); see also BSG Tech, 899 F.3d at 1290 (“It has been clear since
Alice that a claimed invention’s use of the ineligible concept to which it is
directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.”) (citation omitted).
Appellant’s reliance on BASCOM also is unpersuasive because
Appellant fails to present any persuasive explanation that the present
invention entails arranging generic components to achieve some new
filtering technique previously unknown in the art, as was the case in
BASCOM. Rather, Appellant’s invention entails the abstract idea of
managing IT services. Spec. ¶ 4.
The Examiner determined here, and we agree, that the only claim
elements beyond the abstract idea are generic computer components used to
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perform generic computer functions. Final Act. 3, 5. This determination is
supported amply by, and fully consistent with the Specification, see, e.g.,
Spec. ¶ 23 (discussing use of conventional programming languages), ¶ 47
(discussing use of any conventional processor or computer system), ¶ 48
(same).7 Appellant cannot reasonably contend, nor does Appellant contend,
that the operation of these components is not well-understood, routine, or
conventional, where, as here, there is nothing in the Specification to indicate
that the operations recited in claim 11 require any specialized hardware or
inventive computer components, invoke any assertedly inventive software,
or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions, e.g.,
receiving, organizing, collecting information.
In summary, we are not persuaded, on the present record, that the
Examiner erred in rejecting independent claim 11 under 35 U.S.C. § 101 as
being directed to an exception to patent-eligible subject matter without
reciting significantly more. Therefore, we sustain the Examiner’s rejection
of independent claim 11, and also of claims 12, 13, and 15–22, which fall
with claim 11.

7 The Office’s April 19, 2018 Memorandum to the Examining Corps from
Deputy Commissioner for Patent Examination Policy, Robert W. Bahr,
entitled, Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.), available at https://www.uspto.gov/sites/default/files/documents/
memo-berkheimer-20180419.PDF, expressly directs that an examiner may
support the position that an additional element (or combination of elements)
is not well-understood, routine or conventional with “[a] citation to an
express statement in the specification . . . that demonstrates the well-
understood, routine, conventional nature of the additional element(s)” (id.
at 3).
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11–13,
15–22
101 Eligibility 11–13,
15–22

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