Ethan Hadar

Patent Trials and Appeals Board

Oct 8, 2019

12728616 - (D) (P.T.A.B. Oct. 8, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/728,616 03/22/2010 Ethan Hadar 063170.9408 5699
106095 7590 10/08/2019
Baker Botts LLP/CA Technologies
2001 Ross Avenue
SUITE 900
Dallas, TX 75201
EXAMINER
STERRETT, JONATHAN G
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
10/08/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTOmail1@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ETHAN HADAR
____________

Appeal 2018-008400
Application 12/728,616
Technology Center 3600
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

SZPONDOWSKI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–3, 5–12, 14–21, 23–28, and 30–32, which
constitute all of the claims pending in this application. 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 Computer
Associates Think, Inc. Appeal Br. 2.
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STATEMENT OF THE CASE
Appellant’s invention relates “generally to information technology
management, and more particularly to a hybrid software component and
service catalog.” Spec. 1. Claim 1, reproduced below, is representative of
the claimed subject matter:
1. A method comprising:
monitoring, by a processor, service information associated
with a plurality of existing information technology services in an
enterprise, wherein each of the plurality of existing information
technology services is selected from the group consisting of
hardware, software, a process, and device currently deployed,
and wherein each of the plurality of existing information services
is associated with one or more attributes;
assigning a quality metric to one or more attributes of each
of the respective identified existing information technology
services;
monitoring, by the processor, service information
associated with a plurality of potential information technology
services, wherein each of the plurality of potential information
technology services is selected from the group consisting of
hardware, software, a process, and device for replacing or
enhancing at least one of the plurality of existing information
technology services currently deployed in the enterprise, and
wherein each of the plurality of existing information services is
associated with one or more attributes;
receiving, by the processor, a quality metric associated
with one or more attributes of each of the respective identified
potential information technology services from a source external
to the enterprise;
receiving, from a user, a comparison schedule, the
comparison schedule identifying:
a selected one of the existing information
technology services currently deployed in the enterprise;
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a selected one of the potential information
technology services for replacing or enhancing the
selected one of the existing information technology
services currently deployed in the enterprise; and
one or more comparison times, wherein the one or
more comparison times each indicate a time at which to
compare the selected one of the existing information
technology services included in the comparison schedule
and the selected one of the potential information
technology services included in the comparison schedule;
based on the comparison schedule, calculating, by the
processor, an attribute difference between the quality metric
associated with the selected one of the existing information
technology services currently deployed in the enterprise and the
quality metric associated with the selected one of the potential
information technology services;
comparing, by the processor, the attribute difference to a
threshold, the threshold comprising a minimum attribute
difference between the quality metric associated with the
selected one of the existing information technology services and
the quality metric associated with the selected one of the
potential information technology services;
determining, by the processor, that the attribute difference
for the selected one of the potential information technology
services is greater than the threshold comprising the minimum
attribute difference; and
in response to determining that the attribute difference for
the selected one of the potential information technology services
is greater than the threshold comprising the minimum attribute
difference, determining, by the processor, that the selected one
of the existing information technology services should be
enhance or replaced with the selected one of the potential
information technology services and causing, by the processor,
the selected one of the potential information technology services
to be displayed to the user.
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REJECTIONS
Claims 1–3, 5–12, 14–21, 23–28, and 30–32 stand rejected under 35
U.S.C. § 101 as directed to patent-ineligible subject matter. Non-Final
Act. 11.
Claims 1–3, 5, 7, 9–12, 14, 16, 18–21, 23, 25, 27, and 28 stand
rejected under 35 U.S.C. § 103 as unpatentable over Steinberg (US
2005/0220280 A1; published Oct. 6, 2005), Anand et al. (WO 01/26013 A1;
published Apr. 12, 2001) (“Anand”), and Vos et al. (US 2008/0244095 A1;
published Oct. 2, 2008) (“Vos”). Non-Final Act. 18.
Claims 6, 8, 15, 17, 24, and 26 stand rejected under 35 U.S.C. § 103
as unpatentable over Steinberg, Anand, Vos, and Barrenechea (US
2006/0200477 A1; published Sept. 7, 2006). Non-Final Act. 33.
Claims 30–32 stand rejected under 35 U.S.C. § 103 as unpatentable
over Steinberg, Anand, Vos, and Peterson et al. (US 7,197,466 B1; issued
Mar. 27, 2007) (“Peterson”). Non-Final Act. 36.2

ANALYSIS
Section 101 Rejection
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

2 The statement of rejection lists claims 6, 8, 15, 17, 24, and 26, but the body
of the rejection is directed to claims 30–32. Non-Final Act. 36–37. The
Examiner corrects this in the statement of rejection repeated in the
Examiner’s Answer. Ans. 4.
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ideas” are not patentable. 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 v. Kappos, 561 U.S.
593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
69 (1972)). Concepts determined to be patent eligible include physical and
chemical processes, 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 (1853))); and manufacturing flour (Benson,
409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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
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concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Memorandum”). 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.
08.2017, Jan. 2018)).
See Memorandum, 84 Fed. Reg. at 52, 54–55. 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, 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.
See id. at 56.
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USPTO Memorandum, Step 2A, Prong 1
Under the first step of the Alice/Mayo framework, the Examiner
determines that the claims are “directed to maximizing investment by
making the correct choice of IT services,” which is “directed to the abstract
idea of making a proper resource allocation.” Ans. 5. Specifically, the
Examiner concludes that the claims are directed to “the abstract idea of
gathering known service information data, analyzing the data generating rule
based tasks, and displaying the results in the form of a displayed offer.”
Non-Final Act. 11–12. The Examiner compares the claimed invention to
those in FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089 (Fed.
Cir. 2016), and Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2017). See id. at 12–15; Ans. 7.
Appellant argues the Examiner’s analysis is “at a high level of
abstraction that is untethered from the claim language or oversimplified to
downplay the invention’s benefits.” Reply Br. 3. Specifically, Appellant
argues that the claims “are directed to an improvement to computer
functionality and not merely the abstract idea of receiving, manipulating,
and transmitting information to a networked computer” or the “abstract idea
of using categories to organize, store, and transmit information.” Appeal
Br. 21–22.
We are not persuaded by Appellant’s arguments and agree with the
Examiner that the claims recite an abstract idea, specifically, a mental
process. See Non-Final Act. 11–15; Ans. 5; 84 Fed. Reg. at 52. In the
Background of the Invention, Appellant describes that “information
technology departments are constantly optimizing their technology
infrastructure and deployments for maximal return,” and that “information
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technology managers may insert new ones based on needs and proactive
forecasting of changes.” Spec. 2. This “optimization can be done by
replacing service agreements, tuning according to actual consumption of
services, and adjusting service levels.” Id. Appellant notes there may be
“several alternatives of presumably identical functional and business value,
but with different non-functional . . . properties that may differentiate
between them.” Id. Appellant thus describes the need for an improved
“information technology catalog system.” Id. at 3.
Claim 1 recites, inter alia, a system performing a method comprising:
monitoring . . . service information associated with a plurality of
existing information technology services in an enterprise,
wherein each of the plurality of existing information technology
services is selected from the group consisting of hardware,
software, a process, and device currently deployed, and wherein
each of the plurality of existing information services is associated
with one or more attributes;
assigning a quality metric to one or more attributes of each of the
respective identified existing information technology services;
monitoring . . . service information associated with a plurality of
potential information technology services, wherein each of the
plurality of potential information technology services is selected
from the group consisting of hardware, software, a process, and
device for replacing or enhancing at least one of the plurality of
existing information technology services currently deployed in
the enterprise, and wherein each of the plurality of existing
information services is associated with one or more attributes;
receiving . . . a quality metric associated with one or more
attributes of each of the respective identified potential
information technology services from a source external to the
enterprise;
receiving, from a user, a comparison schedule, the comparison
schedule identifying: [1] a selected one of the existing
information technology services currently deployed in the
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enterprise; [2] a selected one of the potential information
technology services for replacing or enhancing the selected one
of the existing information technology services currently
deployed in the enterprise; and [3] one or more comparison
times, wherein the one or more comparison times each indicate
a time at which to compare the selected one of the existing
information technology services included in the comparison
schedule and the selected one of the potential information
technology services included in the comparison schedule;
based on the comparison schedule, calculating . . . an attribute
difference between the quality metric associated with the
selected one of the existing information technology services
currently deployed in the enterprise and the quality metric
associated with the selected one of the potential information
technology services;
comparing . . . the attribute difference to a threshold, the
threshold comprising a minimum attribute difference between
the quality metric associated with the selected one of the existing
information technology services and the quality metric
associated with the selected one of the potential information
technology services;
determining . . . that the attribute difference for the selected one
of the potential information technology services is greater than
the threshold comprising the minimum attribute difference; and
in response to determining that the attribute difference for the
selected one of the potential information technology services is
greater than the threshold comprising the minimum attribute
difference, [1] determining . . . that the selected one of the
existing information technology services should be enhance or
replaced with the selected one of the potential information
technology services and [2] causing . . ., the selected one of the
potential information technology services to be displayed to the
user.
Supplemental Appeal Br. 2–3 (Claims App.). Claim 7 recites similar
limitations in a “system comprising: a memory” and “an optimizing server.”
Supplemental Appeal Br. 5–6 (Claims App.). Claim 19 also recites similar
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limitations in a “computer readable non-transitory medium encoded with
logic” that is executed on a “processor.” Supplemental Appeal Br. 8–9
(Claims App.). Claim 28, likewise, recites a “system” claim with similar
limitations. Supplemental Appeal Br. 11–12 (Claims App.).
Appellant has not persuasively argued why the claim limitations
identified above cannot be practically performed by a human, either
mentally, manually, or with the use of pen and paper. See, e.g. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011);
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016); Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Can. (U.S.),
687 F.3d 1266, 1279 (Fed. Cir. 2012). For example, an IT manager can
monitor service information for existing services, and then assign, either
mentally or using pen and paper, quality metrics to attributes of the existing
services. Then, the IT manager can monitor service information for
potential services, and then receive quality metrics for the attributes of the
potential services. Then, the IT manager can mentally, or using pen and
paper, compare a selected existing service and a selected potential service
according to a comparison schedule, and calculate, either mentally or using
pen and paper, the attribute difference between the quality metrics. Next,
the IT manager can mentally, or using pen and paper, compare the calculated
attribute difference to a threshold, and can mentally, or using pen and paper,
determine that this attribute difference is greater than a threshold. As a
result, the IT manager can determine, mentally or using pen and paper, that
the selected existing service should be enhanced or replaced with the
selected potential service, and then inform the user of this selection.
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Essentially, Appellant seeks to automate a manual process, which is
insufficient to render the claim patent-eligible. See Spec. 16 (“Optimizing
server 50, configured with business rules by the tool users, provides a
constant dashboard to IT managers for triggering change management, or
proactive sensing of business opportunities” and “users will have ‘hands-on’
watchdogs over changes in offerings, and align them to their specific
business needs”); see, e.g., OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015) (“relying on a computer to perform tasks more
quickly or more accurately is insufficient to render a claim patent eligible”).
Moreover, the mere mention of certain computer components in the claims
(e.g. “processor,” “memory,” “optimizing server”) does not impose
sufficiently meaningful limitations on claim scope beyond these mental
steps. Intellectual Ventures, 838 F.3d at 1318; Bancorp, 687 F.3d at 1278–
79.
Accordingly, we conclude the claims recite a mental process as
identified in the Memorandum, and thus an abstract idea.
USPTO Memorandum, Step 2A, Prong 2
In determining whether claim 1 is “directed to” the identified abstract
idea, we next consider whether the claims recite additional elements that
integrate the judicial exception into a practical application. For the reasons
set forth below, we discern no additional element (or combination of
elements) recited in claim 1 that integrates the judicial exception into a
practical application. See Memorandum, 84 Fed. Reg. at 54–55. Here, the
additional elements at issue are the “processor” (claim 1); “memory” and
“optimizing server” (claim 9); “computer readable non-transitory medium
encoded with logic, the logic operable, when executed on a processor”
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(claim 19); and various means for performing the recited steps (claim 28).
Claims App’x 2, 3, 5, 6, 8, 9, 11.
Appellant argues the claims “are directed to a specific implementation
of replacing or enhancing existing information technology services currently
deployed in an enterprise,” which is “a technical improvement (a
technology-based solution) that overcomes existing problems of other
systems and therefore are patent-eligible.” Appeal Br. 23–24. Appellant
also contends that the claims “provid[e] for the periodic comparison of IT
services to determine whether an existing IT service should be enhanced
and/or changed is associated with various benefits that constitute a technical
improvement.” Id. at 24 (citing Spec. 16, ll. 1–31); see Reply Br. 4.
Specifically, Appellant argues that, like in Enfish, the “claims are directed to
a technology-based solution (i.e., a processor configured to monitor existing
IT services and potential IT services, assign quality metrics to such IT
services, and determine when the existing IT services should be replaced
w[]ith the potential IT services) that overcomes existing problems of other
systems.” Reply Br. 4 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016)); see Appeal Br. 22–24. Appellant also compares the
claimed invention to that in Bascom. Appeal Br. 22–24 (citing BASCOM
Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)).
We are not persuaded by Appellant’s arguments and agree with the
Examiner’s findings. See Non-Final Act. 13–16; Ans. 5–7. In Enfish, the
Federal Circuit decided that the claims satisfied § 101 under Mayo/Alice
step one because they recited a “specific improvement to the way computers
operate,” i.e., an improved database configuration that permitted faster and
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more efficient searching. Enfish, 822 F.3d at 1330–33, 1336, 1339. Further,
the Federal Circuit has explained that the claims in Enfish “did more than
allow computers to perform familiar tasks with greater speed and efficiency”
and “actually permitted users to launch and construct databases in a new
way.” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305 (Fed. Cir.
2018); see also Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d
905, 910 (Fed. Cir. 2017) (explaining that the claims in Enfish “focused on
an improvement to computer functionality itself”).
Similarly, in BASCOM, the claims recited a “specific method of
filtering Internet content” requiring “the installation of a filtering tool at a
specific location, remote from the end-users, with customizable filtering
features specific to each end user.” BASCOM, 827 F.3d at 1345–46, 1350.
The Federal Circuit reasoned that the claims covered “a technology-based
solution . . . to filter content on the Internet that overcomes existing
problems with other Internet filtering systems” and “improve[s] an existing
technological process.” Id. at 1351 (citing Alice, 573 U.S. at 223); see Alice,
573 U.S. at 223 (explaining that “the claims in Diehr were patent eligible
because they improved an existing technological process”).
Unlike the claims in Enfish and BASCOM, the claims here do not
recite an improvement to computer functionality or a technology-based
solution that improves an existing technological process. See Ans. 5–7;
Non-Final Act. 13–14. For instance, the claims do not recite an advance in
hardware or software that causes the processor itself or the memory itself to
operate faster or more efficiently. As the Examiner correctly finds, the
claimed invention is “directed to the abstract idea of making a proper
resource allocation,” and “does not solve a technical problem,” but instead
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addresses “the business or financial management of IT services directed to
maximizing investment by making the correct choice of IT services.” Ans.
5. Specifically, the Examiner determines, and we agree, that “the claimed
invention is not directed to an improvement in computer functionality, but
rather to the business/management problem of efficient resource allocation.”
Id. at 6. Our conclusion is supported by Appellant’s own argument, which
describes that “the method and system providing for the periodic comparison
of IT services to determine whether an existing IT service should be
enhanced and/or changed is associated with various benefits that constitute a
technical improvement over the prior art.” Appeal Br. 24. Under
Appellant’s own description the improvement is to the abstract idea rather
than the computer functionality or technological process.
Further, the claims employ generic computer-system components,
e.g., a “processor,” “memory,” and an “optimizing server,” in their ordinary
capacities to monitor, communicate, manipulate, and display data. See
Supplemental Appeal Br. 2–3, 5–6, 8–9, 11–12; Spec. 10, 12, 19–20; see
also Alice, 573 U.S. at 226. Appellant does not direct our attention to any
disclosure in the Specification that indicates the claimed “processor,”
“memory,” or “optimizing server” are anything other than generic computer
components. Simply programming a general-purpose computer to perform
abstract ideas does not integrate those ideas into a practical application. See
Memorandum, 84 Fed. Reg. at 55 (identifying “merely includ[ing]
instructions to implement an abstract idea on a computer” as an example of
when an abstract idea has not been integrated into a practical application).
Moreover, as discussed above, relying on a computer to perform
routine tasks more quickly or more accurately is insufficient to render a
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claim patent eligible. See Alice, 573 U.S. at 224 (“use of a computer to
create electronic records, track multiple transactions, and issue simultaneous
instructions” is not an inventive concept); Bancorp, 687 F.3d at 1278 (a
computer “employed only for its most basic function . . . does not impose
meaningful limits on the scope of those claims”); MPEP 2106.05(f)(2) (“Use
of a computer or other machinery in its ordinary capacity for economic or
other tasks (e.g., to receive, store, or transmit data) or simply adding a
general purpose computer or computer components after the fact to an
abstract idea (e.g., a fundamental economic practice or mathematical
equation) does not provide significantly more.”); OIP Techs., 788 F.3d
at 1363. Moreover, 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).
Appellant further argues that the claims, like those in DDR Holdings,
“are necessarily rooted in computer technology because they overcome a
problem specifically arising in the realm of computer networks are patent
eligible.” Appeal Br. 25 (citing DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014)); see Reply Br. 4.
In DDR Holdings, the Federal Circuit determined that certain claims
satisfied § 101 under Mayo/Alice step two because “the claimed solution
amount[ed] to an inventive concept for resolving [a] particular Internet-
centric problem,” i.e., a challenge unique to the Internet. DDR Holdings,
773 F.3d at 1257–59; see Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1151 (Fed. Cir. 2016) (noting that “[i]n DDR Holdings, we held that
claims ‘directed to systems and methods of generating a composite web page
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that combines certain visual elements of a ‘host’ website with content of a
third-party merchant’ contained the requisite inventive concept”). The
Federal Circuit explained that the patent-eligible claims specified “how
interactions with the Internet are manipulated to yield a desired result . . .
that overrides the routine and conventional sequence of events ordinarily
triggered by the click of a hyperlink.” DDR Holdings, 773 F.3d at 1258.
The court reasoned that those claims recited a technological solution
“necessarily rooted in computer technology” that addressed a “problem
specifically arising in the realm of computer networks.” Id. at 1257.
According to the Federal Circuit, “DDR Holdings does not apply
when . . . the asserted claims do not ‘attempt to solve a challenge particular
to the Internet.’” Smart Sys. Innovations, LLC v. Chi. Transit Auth.,
873 F.3d 1364, 1375 (Fed. Cir. 2017) (quoting In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016)). Unlike the patent-eligible
claims in DDR Holdings, the claims here do not attempt to solve a challenge
particular to the Internet. See Supplemental Appeal Br. 2–3, 5–6, 8–9, 11–
12; see also Non-Final Act. 11–14, 15–16; Ans. 6.
Accordingly, for the foregoing reasons, the claims fail to integrate the
abstract mental process into a practical application.
USPTO Memorandum, Step 2B
Turning to step 2 of the Alice/Mayo framework, we look to whether
the claims (a) add a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, or (b) simply
append well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. Memorandum, 84 Fed. Reg. at 56.
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The Examiner determines that the claimed additional elements (e.g., a
“processor,” an “optimizing server”) “[are] recited at a high level of
generality, and comprise[] only a processor/generic computer . . . to simply
perform the generic computer functions of receiving, manipulating and
transmitting information to a networked computer.” Non-Final Act. 15–16
(citing Spec. 12, ll. 24–30).
Appellant argues the claims “employ a specifically programmed
special-purpose computer to employ a specific classification program that
classifies communication flows using collaborative classifiers.” Appeal Br.
25.
We are not persuaded. Consistent with the Examiner’s findings, the
Specification describes the claimed computer-system components
generically and evidences their conventional nature. See, e.g., Spec. 10, 12,
19–20. As an example, the Specification describes that the “optimizing
server 50 comprises any suitable combination of hardware and/or software
implemented in one or more modules to provide the described functions and
operations,” and “may comprise a general-purpose computer (PC), a
Macintosh, a workstation, a Unix-based computer, a server computer, or any
suitable processing device.” Spec. 12. The Specification similarly describes
a “processor” and “memory.” See id. at 10, 12, 19–20. Appellant does not
direct our attention to any disclosure in the Specification that indicates the
claimed “processor,” “memory,” or “optimizing server” are anything other
than generic computer components.
As discussed above, Appellant also does not direct our attention to
anything in the Specification that indicates the computer components
perform anything other than the well-understood, routine, and conventional
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functions of monitoring, communicating, manipulating, and displaying data.
See Elec. Power, 830 F.3d at 1355 (“Nothing in the claims, understood in
light of the specification, requires anything other than off-the-shelf,
conventional computer, network, and display technology for gathering,
sending, and presenting the desired information”); buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and
sends the information over a network—with no further specification—is not
even arguably inventive”); In re TLI Commc’ns LLC Patent Litig., 823 F.3d
607, 614 (Fed. Cir. 2016) (server that receives data, extracts classification
information from the received data, and stores the digital images insufficient
to add an inventive concept); Alice, 573 U.S. at 225–26 (receiving, storing,
and sending information over networks insufficient to add an inventive
concept).
Appellant also argues that the claims “provid[e] for the periodic
comparison of IT services to determine whether an existing IT service
should be enhanced and/or changed is associated with various benefits that
constitute a technical improvement over the prior art.” Appeal Br. 24 (citing
Spec. 16, ll. 1–31); see Reply Br. 4.
To the extent that Appellant is arguing the pending claims are patent
eligible because they otherwise overcome any prior-art references, and are
novel and non-obvious, this argument is not persuasive because it
improperly conflates the requirements for eligible subject matter (§ 101)
with the independent requirements of novelty (§ 102) and obviousness
(§ 103). Although the second step in the Alice framework is termed a search
for an “inventive concept,” the analysis is not an evaluation of novelty or
non-obviousness. Alice, 573 U.S. at 217–18. A novel and non-obvious
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claim directed to a purely abstract idea is, nonetheless, patent ineligible. See
Mayo, 566 U.S. at 78–79. Further, “under the Mayo/Alice framework, a
claim directed to a newly discovered law of nature (or natural phenomenon
or abstract idea) cannot rely on the novelty of that discovery for the
inventive concept necessary for patent eligibility.” Genetic Techs. Ltd. v.
Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
Given the claimed generic computer-system components that perform
generic computer functions, we conclude that the combination of limitations
in each independent claim does not supply an “inventive concept” that
renders the claim “significantly more” than an abstract idea. Thus, the
claims does not satisfy § 101 under Mayo/Alice step two.
For at least the above reasons, we sustain the Examiner’s rejection of
claim 1 as being directed to patent-ineligible subject matter, as well as
independent claims 10, 19, and 28, with commensurate limitations, and
dependent claims 2, 3, 5–9, 11, 12, 14–18, 20, 21, 23–27, 30–32, which were
not separately argued.

Section 103 Rejections
Issue: Did the Examiner err in finding that the combination of
Steinberg, Anand, and Vos teaches:
receiving, from a user, a comparison schedule, the comparison
schedule identifying: [1] a selected one of the existing
information technology services currently deployed in the
enterprise; [2] a selected one of the potential information
technology services for replacing or enhancing the selected one
of the existing information technology services currently
deployed in the enterprise; and [3] one or more comparison
times, wherein the one or more comparison times each indicate
a time at which to compare the selected one of the existing
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information technology services included in the comparison
schedule and the selected one of the potential information
technology services included in the comparison schedule,
as recited in independent claim 1, and commensurately recited in
independent claims 10, 19, and 28?
The Examiner finds that Anand’s identification of key performance
indicators (“KPIs”) to report upon in a service level agreement (“SLA”),
including details of how and how often measurements will be reported, and
comparing the service statistics against key performance indicators, teaches
the claimed comparison schedule. Non-Final Act. 21–22 (citing Anand 1, ll.
10–34; 2, ll. 1–10; 7, ll. 9–27; 8, ll. 1–26); see Ans. 7–8. Specifically, the
Examiner finds that Anand’s analysis of technology infrastructure
requirements, including software packages now in use or contemplated for
use, teaches the claimed existing information technology currently deployed
in the enterprise; and that Anand’s identifying changes needed to upgrade
the service level management capability teaches the claimed potential
information technology services. Non-Final Act. 22–23 (citing Anand 13, ll.
1–29; 16–17; 11–12; Fig. 4). The Examiner also finds that Anand’s service
level review performed at scheduled intervals, selecting components that
should support the service level management architecture, and reporting on a
daily or even more frequent basis, teaches the claimed comparison times
indicating times to compare the selected existing information technology
services and potential information technology services. Id. at 23–24 (citing
Anand 8, ll. 1–26; 22–23; 25–26, 29); see Ans. 7–8 (citing Anand 7).
Appellant argues that Anand teaches “identifying services to be
included in service level agreements and monitoring those services with
respect to KPIs” and creating reports on a time schedule and comparing
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service statistics against performance indicators, but does not teach the
comparison schedule as claimed. Appeal Br. at 28. Specifically, Appellant
argues that “even to the extent that Anand discloses reporting on service
lines at defined intervals, there is no disclosure in Anand of a comparison
schedule that identifies an existing service line to be compared against a
potential service line that could replace the existing service line.” Id. at 27.
According to Appellant, Anand’s “comparison schedule identifies how and
how often to generate a report on KPIs,” but does not “identif[y] a specific
existing information technology service to be compared with a specific
potential technology service.” Reply Br. 5–6.
We are persuaded by Appellant’s arguments. Claim 1 requires (1) a
selected one of the existing information technology services currently
deployed in the enterprise, (2) a selected one of the potential information
technology services for replacing or enhancing the selected one of the
existing information technology services currently deployed in the
enterprise, and (3) one or more comparison times that each indicate a time at
which to compare the selected one of the existing information technology
services included in the comparison schedule and the selected one of the
potential information technology services included in the comparison
schedule.
The cited sections of Anand teach “creating reports and distributing
them on the agreed-upon time schedule,” “obtain[ing] detailed service
reports from appropriate service providers, and collat[ing] and/or
summariz[ing] report-data as necessary,” and “comparing service statistics
against key performance indicators.” Anand 7. Anand also teaches
“evaluating the reuse component options, determining possible gaps where
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the software does not satisfy requirements, and selecting the appropriate
reuse components” and “evaluating the packaged component options,
determining gaps where the software does not satisfy requirements, and
selecting the appropriate packaged components.” Id. at 23.
In other words, Anand teaches, according to a schedule, comparing
service statistics against key performance indicators, and generally selecting
components by evaluating them and determining gaps where the software
does not satisfy requirements. However, Anand does not link one existing
service and one potential replacement service, and comparing these services
according to a schedule.
Therefore, we find the Examiner has not provided sufficient findings
that the combination of Steinberg, Anand, and Vos teaches the claimed “the
comparison schedule identifying: [1] a selected one of the existing
information technology services currently deployed in the enterprise”; (2) “a
selected one of the potential information technology services for replacing
or enhancing the selected one of the existing information technology
services currently deployed in the enterprise”; and (3) “one or more
comparison times, wherein the one or more comparison times each indicate
a time at which to compare the selected one of the existing information
technology services included in the comparison schedule and the selected
one of the potential information technology services included in the
comparison schedule.” Because we agree with at least one of the arguments
advanced by Appellant, we need not reach the merits of Appellant’s other
arguments.
Accordingly, we do not sustain the Examiner’s § 103(a) rejection of
independent claims 1, 10, 19, and 28, and dependent claims 2, 3, 5, 7, 9, 11,
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12, 14, 16, 18, 20, 21, 23, 25, and 27.
Moreover, because the Examiner has not shown that the additional
references cure the foregoing deficiency regarding the rejection of the
independent claim, we do not sustain the obviousness rejections of
dependent claims 6, 8, 15, 17, 24, 26, and 30–32.

DECISION
We affirm the Examiner’s rejection of claims 1–3, 5–12, 14–21, 23–
28, and 30–32 under 35 U.S.C. § 101.
We reverse the Examiner’s rejections of claims 1–3, 5–12, 14–21, 23–
28, and 30–32 under 35 U.S.C. § 103.
In summary:
Claims Rejected 35 U.S.C. § Basis Affirmed Reversed
1–3, 5–12, 14–
21, 23–28, 30–32
101 Eligibility 1–3, 5–12, 14–21, 23–28, 30–32
1–3, 5, 7, 9–12,
14, 16, 18–21,
23, 25, 27, 28
103 Steinberg,
Anand, Vos
1–3, 5, 7, 9–12, 14,
16, 18–21, 23, 25,
27, 28
6, 8, 15, 17, 24,
26
103 Steinberg,
Anand,
Vos,
Barrenechea
6, 8, 15, 17, 24, 26
30–32
103 Steinberg,
Anand,
Vos,
Peterson
30–32
Overall
Outcome
1–3, 5–12, 14–21, 23–28, 30–32
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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)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED