Ethan Hadar et al.

Patent Trials and Appeals Board

Jan 3, 2020

12713557 - (D) (P.T.A.B. Jan. 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.
12/713,557 02/26/2010 Ethan Hadar 063170.9409 4959
106095 7590 01/03/2020
Baker Botts LLP/CA Technologies
2001 Ross Avenue
SUITE 900
Dallas, TX 75201
EXAMINER
SHANKER, JULIE MEYERS
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
01/03/2020 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):
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, GREGORY LEWIS BODINE, and
BALAKRISHNA VENKATRAO
____________

Appeal 2018-005703
Application 12/713,557
Technology Center 3600
____________

Before JOSEPH L. DIXON, JOHNNY A. KUMAR, and
JASON M. REPKO, Administrative Patent Judges.

REPKO, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 1, 2, 4–8, 10–14, and 16–23. Appeal Br. 1.2 Claims
24–28 have been withdrawn from further consideration under
37 C.F.R. § 1.142(b) as being drawn to a nonelected invention. Final 2.
Claims 3, 9, and 15 are canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

CLAIMED SUBJECT MATTER
Appellant’s invention generally relates to a cloud-broker and
procurement system. Spec. 1.
Claims 1, 7, 13, and 19 are independent. Claim 1 is reproduced below:
1. A method comprising:
receiving, at an optimizer comprising a processing
device, a respective service level agreement from each of a
plurality of providers, each service level agreement being
associated with a computing resource;
storing to a memory each service level agreement,
information identifying the provider associated with each
respective service level agreement, and information identifying
the computing resource associated with each respective service
level agreement;

1 According to Appellant, the real party in interest is Computer Associates
Think, Inc. Appeal Br. 2.
2 Throughout this opinion, we refer to the Final Office Action (“Final”),
mailed October 27, 2016; the Advisory Action (“Advisory”), January 13,
2017; the Appeal Brief (“Appeal Br.”), filed March 27, 2017; the
Examiner’s Answer (“Ans.”), mailed March 9, 2018; and the Reply Brief
(“Reply Br.”), filed May 9, 2018.
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normalizing, by said processing device, each of the
service level agreements;
receiving a request from a requesting computer for the
computing resource, the requesting computer and one or more
first providers from among the plurality of providers being part
of an enterprise;
determining, based at least in part on the normalized
service level agreements, that none of the one or more first
providers offers the requested computing resource in
accordance with the request and that one or more second
providers from among the plurality of providers offer the
requested computing resource in accordance with the request,
the one or more second providers being external to the
enterprise;
determining one or modified terms for fulfilling the
request with internal computing resources by the one or more
first providers to facilitate full utilization of the internal
computing resources without violating the normalized service
level agreements; and
transmitting a counter-offer to the requesting computer
the counter-offer presenting the one or more modified terms
that the one or more first providers being part of the enterprise
is able to fulfill without violating the normalized service level
agreements.
Appeal Br. 25 (Claims App.)

THE REJECTION3
The Examiner rejects claims 1, 2, 4–8, 10–14, and 16–23 under 35
U.S.C. § 101 as patent-ineligible subject matter. Final 2–7.

3 In the office action dated October 27, 2016, the Examiner rejected claims
1, 7, 13, and 19 under pre-AIA 35 U.S.C. 112, first paragraph as failing to
comply with the written-description requirement. Final 8–9. The Examiner
later withdrew this rejection. Advisory 1, item 5.
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ANALYSIS
I. Principles of Law
Under § 101, patent-eligible subject matter is defined as “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” 35 U.S.C. § 101. But courts have long
held that laws of nature, natural phenomena, and abstract ideas are not
patentable. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 70–71 (2012) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)).
These ineligible concepts are implicit exceptions to the statutory categories.
Id. at 71.
The Supreme Court articulated a two-step subject-matter eligibility
test in Mayo and Alice Corp. v. CLS Bank International, 573 U.S. 208
(2014). Alice/Mayo step one asks whether a claim is “directed to” a judicial
exception. Alice, 573 U.S. at 217. In Alice/Mayo step two, we consider “the
elements of each claim both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79,
78). Step two is described as a search for an “inventive concept.” Id.
The USPTO has published revised guidance on patent subject matter
eligibility. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Step 1 of the USPTO’s eligibility
analysis asks whether the claimed subject matter falls within the four
statutory categories of invention. Id. at 53–54. Under Step 2A, Prong One of
the Guidance, we determine if the claim recites a judicial exception,
including particular groupings of abstract ideas (i.e., mathematical concepts,
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certain methods of organizing human activity, or mental processes). Id. at
52–53. If so, we then analyze the claim to determine whether the recited
judicial exception is integrated into a practical application under Step 2A,
Prong Two of the Guidance. Id. at 53–55; MPEP §§ 2106.05(a)–(c), (e)–(h)
(9th ed. Rev. 08.2017, Jan. 2018).
Only if the claim fails to integrate the exception and, thus, is “directed
to” the judicial exception, do we then look to whether the claim adds a
specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional activity in the field” or whether the claim
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. Guidance, 84 Fed. Reg. at 56.

II. Overview of the Examiner’s Rejection and Appellant’s Arguments
The Examiner determines that representative4 claim 1 recites a
contract negotiation. Final 4. In the Examiner’s view, the claims are directed
to a method of organizing human activity, which is an abstract idea. Id. Also,
according to the Examiner, the additional elements do not amount to
significantly more than the abstract idea itself. Id. at 5–7.
Appellant argues that the claims are directed to an improvement to
computer functionality, not an abstract idea. Appeal Br. 14–19. According to
Appellant, the claimed method modifies a request to automatically

4 Appellant argues claims 1, 2, 4–8, 10–14, and 16–23 as a group. See
Appeal Br. 14–23; see also Reply Br. 5 (arguing that the rejection of claim 1
is improper and the other claims are for analogous reasons). We select claim
1 as representative of claims 1, 2, 4–8, 10–14, and 16–23. See 37
C.F.R. § 41.37(c)(1)(iv).
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determine the internal resources to fulfill the request. Reply Br. 2–3.
Appellant argues that the method does not relate to managing relationships
or transactions between people. Id. at 3. Rather, in Appellant’s view, the
claims are directed to a “technology-based solution of utilizing enterprise
resources to fulfill resource requests.” Id. at 4.
Appellant further argues that the claims recite significantly more than
any abstract idea. Appeal Br. 20–21. In Appellant’s view, claim 1 does not
seek to tie up or impermissibly monopolize any abstract idea. Id. at 21–22.
For the reasons discussed below, we are unpersuaded by Appellant’s
arguments and determine that the Examiner did not err in rejecting claim 1
as patent-ineligible subject matter.
III. Does the claim recite a judicial exception?
A. Step 2A, Prong One of the Guidance
We first consider whether the claim recites a judicial exception.
Guidance, 84 Fed. Reg. at 51. The Guidance synthesizes the key concepts
identified by the courts as abstract ideas into three primary subject-matter
groupings: mathematical concepts, certain methods of organizing human
activities, and mental processes. Id. at 52. For the reasons discussed below,
claim 1 recites an abstract idea that falls in the Guidance’s subject-matter
grouping of certain methods of organizing human activities. Id.
B. “receiving . . . a respective service level agreement”
Claim 1 recites, in part, “receiving, at an optimizer comprising a
processing device, a respective service level agreement from each of a
plurality of providers, each service level agreement being associated with a
computing resource;.” Appeal Br. 25 (Claims App.)
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According to the Specification, a service level agreement (SLA)
indicates a computing resource’s cost, availability, guaranteed performance,
or “any other relevant information that may facilitate a transaction between
provider 30 and client 20.” Spec. 8:29–9:2. For example, the SLA may
indicate that the resource’s cost is five cents per minute. Id. at 9:4–5. Here,
received the SLA contains the terms that are the basis of business relations
or commercial interactions with the provider concerning the resource. So
this step is part of a process that falls under the Guidance’s subject-matter
grouping of certain methods of organizing human activities, which includes
commercial or legal interactions, such as “agreements in the form of
contracts” or “business relations.” Guidance, 84 Fed. Reg. at 52.
C. “normalize”
Claim 1 recites, in part, “normalizing, by said processing device, each
of the service level agreements.” Appeal Br. 25 (Claims App.)
The recited normalization allows the contracts to be compared, which
in turn, facilitates negotiations between multiple providers. Spec. 10:13–16.
For example, one SLA may specify the cost in U.S. dollars, and another may
specify the cost in British pounds. Id. at 10:4–7. Normalizing these SLAs
may involve converting the currency units from dollars to pounds.
Id. at 10:7–8. Because the normalization’s purpose is to facilitate business or
commercial negotiations (id.), the normalization is part of a commercial
interaction or business relations involving the SLA and the providers.
D. “a request . . . for a computing resource”
Claim 1 recites, in part, “receiving a request from a requesting
computer for the computing resource, the requesting computer and one or
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more first providers from among the plurality of providers being part of an
enterprise.” Appeal Br. 25 (Claims App.)
In this limitation, the recited request is for computing resource. Such a
request is related to the use of that resource across an enterprise. Accord
id. at 16. The request is from a computer to one or more providers, and both
the computer and the providers are part of an enterprise. So this request is
part of an enterprise’s business relations or commercial interactions. Thus,
this step is part of a process that falls under the Guidance’s subject-matter
grouping of certain methods of organizing human activities. Guidance, 84
Fed. Reg. at 52.
E. The first “determining” step
Claim 1 recites, in part,
determining, based at least in part on the normalized service
level agreements, that none of the one or more first providers
offers the requested computing resource in accordance with the
request and that one or more second providers from among the
plurality of providers offer the requested computing resource in
accordance with the request, the one or more second providers
being external to the enterprise.
Appeal Br. 25 (Claims App.)
This first determination is based on the normalized SLAs. From the
SLAs, the step determines that internal providers (the “first providers”)
cannot fulfill the request but other external providers (the “second
providers”) can. Because the step relates to an interaction with the providers
to obtain a computing resource based on an agreement, the step is part of
business relations or commercial interactions with those providers. Thus,
this step is part of a process that falls under the Guidance’s subject-matter
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grouping of certain methods of organizing human activities. Guidance, 84
Fed. Reg. at 52.
F. The second “determining” step
Claim 1 recites, in part, “determining one or modified terms for
fulfilling the request with internal computing resources by the one or more
first providers to facilitate full utilization of the internal computing resources
without violating the normalized service level agreements.” Appeal Br. 25
(Claims App.)
Instead of fulfilling the request using the external providers, this
second determination modifies the request’s terms. According to the
limitation, the determination helps achieve the business objective of “full
utilization of the internal computing resources without violating the
normalized service level agreements.” Id. For instance, the Specification
explains that “it is the responsibility of the organization to maximize
resource utilization, attracting and retaining as many consumers as possible,
while lowering overhead, and maintaining adequate service levels.”
Spec. 2:20–22. Because the second determination involves modifying the
terms for the business relations and commercial interactions with the
providers, this step is part of a process that falls under the Guidance’s
subject-matter grouping of certain methods of organizing human activities.
Guidance, 84 Fed. Reg. at 52.
G. “counter-offer”
Claim 1 recites, in part, “transmit a counter-offer to the client, the
counter-offer presenting the one or more modified terms that the one or
more first providers being part of the enterprise is able to fulfill without
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violating the normalized service level agreements.” Appeal Br. 25 (Claims
App.)
The Examiner finds, and we agree, that the recited counter-offer is
part of a negotiation of an agreement. See Ans. 4. Specifically, this
limitation presents the modified terms. These modified terms allow the
internal providers to fulfill without violating the agreements. Because this
step recites part of the negotiation over the terms of an agreement, it is a
business relation or commercial interaction that falls under the Guidance’s
subject-matter grouping of certain methods of organizing human activities.
Guidance, 84 Fed. Reg. at 52.
H. Conclusion to Step 2A, Prong One
Appellant argues that the claims “relate to utilization of computing
resources across an enterprise.” Appeal Br. 16. But even if the claims relate
to those resources, the above-discussed limitations recite the corresponding
business relations or commercial interactions. Considering all the limitations
together, claim 1 recites a method that falls within the Guidance’s subject-
matter grouping of certain methods of organizing human activities. Accord
Final 4 (discussing “organizing human activity”). Thus, claim 1 recites an
abstract idea.
IV. Is the claim “directed to” the recited judicial exception?
A. Step 2A, Prong Two of the Guidance
Because claim 1 recites an abstract idea, we now proceed to determine
whether the recited judicial exception is integrated into a practical
application. Guidance, 84 Fed. Reg. at 51. When a claim recites a judicial
exception and fails to integrate the exception into a practical application, the
claim is “directed to” the judicial exception. Id.
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We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. See
id. at 55 n.24. In claim 1, the additional elements include (1) transmitting
and receiving data, including the SLA, request, and counter-offer, (2) the
optimizer, and (3) “storing to a memory each service level agreement,
information identifying the provider associated with each respective service
level agreement, and information identifying the computing resource
associated with each respective service level agreement.” We consider these
elements individually and in combination in the sections that follow.
B. transmitting and receiving
Here, claim 1 does not purport to improve how the SLA, request, and
counter-offer are sent and received. Instead, the transmission and data
reception merely communicate the information from one entity to another.
So claim 1’s receiving and transmitting steps do not add meaningful
limitations to the computing process because these steps add only
insignificant extra-solution activity and are only nominally related to the
invention. See, e.g., OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363–64 (Fed. Cir. 2015) (determining that the recited data gathering did not
meaningfully limit the abstract idea), cited in MPEP § 2106.05(g). The
Federal Circuit has explained that sending and receiving information over a
network without further specification may not be sufficient to render the
claims patent eligible. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014).
In the recited receiving and transmitting steps, the computing device
simply receives and sends the data. At most, the claim limits the content of
the data—e.g., “each service level agreement being associated with a
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computing resource” and “the counter-offer presenting the one or more
modified terms.” Thus, the receiving and transmitting steps, considered
individually and in combination with the other limitations, do not indicate
that the judicial exception has been integrated into a practical application.
C. “optimizer”
Claim 1 recites, in part, “an optimizer comprising a processing
device.” Appeal Br. 25 (Claims App.)
To be sure, the recited computing device may perform the calculations
faster than a human. Using the computing device to achieve a solution more
quickly, though, may not be sufficient to show an improvement to computer
technology. See Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306,
1335 (Fed. Cir. 2015); see also MPEP § 2106.05(a)(II) (instructing
examiners that a “commonplace business method being applied on a general
purpose computer” may not be sufficient to show an improvement).
Here, the computing device is used as a tool in its ordinary capacity to
receive data. By contrast, a particular machine or manufacture that is integral
to the claim indicates that the abstract idea has been integrated into a
practical application. Guidance, 84 Fed. Reg. at 55. But a general-purpose
processor that merely carries out the judicial exception—as is the case
here—is not a particular machine. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 716–17 (Fed. Cir. 2014), cited in MPEP § 2106.05(b)(I).
For instance, the Specification discloses that “optimizer 40 may
comprise a general-purpose personal computer.” Spec. 14:18. Essentially,
the recited computing device is a general-purpose computer that executes the
abstract idea. See id. Thus, the claimed method does not use the optimizer in
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a way that indicates that the judicial exception has been integrated into a
practical application.
D. “storing”
Claim 1 recites, in part, “storing to a memory each service level
agreement, information identifying the provider associated with each
respective service level agreement, and information identifying the
computing resource associated with each respective service level
agreement.” Appeal Br. 25 (Claims App.)
This step merely “adds insignificant extra-solution activity to the
judicial exception.” Guidance, 84 Fed. Reg. at 55. For instance, the MPEP
further instructs examiners that courts have recognized that the function of
“[s]toring and retrieving information in memory” can be “insignificant extra-
solution activity.” MPEP § 2106.05(d)(II) (collecting cases). Also, the
Federal Circuit has “held that mere ‘[data-gathering] step[s] cannot make an
otherwise nonstatutory claim statutory.’” CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (alteration in original)
(quoting In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989)).
At most, the storing step limits the content stored. “The mere
combination of data sources, however, does not make the claims patent
eligible.” FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1097
(Fed. Cir. 2016). Thus, the recited storing step, considered individually and
in combination with the other limitations, does not indicate that the claim
integrates the abstract idea into a practical application.
E. The Combination
Appellant argues that claim 1 covers an improvement to computer
functionality. Appeal Br. 14–19. According to Appellant, claim 1 modifies a
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request to automatically determine the internal resources to fulfill the
request. Reply Br. 2–3. In Appellant’s view, the claims are directed to a
“technology-based solution of utilizing enterprise resources to fulfill
resource requests.” Id. at 4.
It is true that an improvement to technology or a technical field, for
example, indicates that the claim may have integrated the judicial exception
into a practical application. Guidance, 84 Fed. Reg. at 55. But that is not the
case here.
The invention addresses the “disadvantages and problems associated
with cloud broker and procurement systems and methods.” Spec. 3:3–4. The
Specification explains that an organization has a responsibility attract and
retain as many consumers as possible, “while lowering overhead, and
maintaining adequate service levels.” Id. at 2:20–22. The method allows
enterprises to increase return on investment and reduce costs. See
id. at 4:13–19, cited in Appeal Br. 19. Yet these concerns are related to the
commercial enterprise and the abstract idea that we identified above. We are
unpersuaded that modifying terms of a contract or agreement is a technical
solution. See, e.g., Reply Br. 2–3. Rather, for the reasons discussed above,
modifying the terms is part of the abstract idea. See supra § III.
Appellant notes that this modification is performed on a computer.
Reply Br. 3. According to Appellant, the claim recites “a specifically
programmed special-purpose computer.” Appeal Br. 20–21. But here, the
computer merely executes the abstract idea without more. And mere
“instructions to implement an abstract idea on a computer, or merely [using]
a computer as a tool to perform the abstract idea” indicates that the judicial
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exception has not been integrated into a practical application. Guidance, 84
Fed. Reg. at 55.
Thus, we are unpersuaded that the claims are directed to an
improvement to computer functionality. Appeal Br. 14–19; Reply Br. 2–4.
F. Other Indicia of Integration
Claim 1 does not recite the other indicia of integration listed in the
Guidance. Guidance, 84 Fed. Reg. at 55. For instance, “[t]ransformation and
reduction of an article ‘to a different state or thing’ is the clue to the
patentability of a process claim that does not include particular machines.”
Bilski v. Kappos, 561 U.S. 593, 604 (2010) (emphasis added), quoted in
MPEP § 2106.05(c). Yet “not all transformations . . . infuse an otherwise
ineligible claim with an ‘inventive concept.’” DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014). Unlike the
transformations found in some eligible claims, claim 1’s method does not
transform a physical object or substance. See, e.g., Diehr, 450 U.S. at 184 (a
process that transforms rubber).
G. Conclusion to Step 2A, Prong Two
After evaluating all the considerations in the Guidance’s Step 2A, we
agree with the Examiner that claim 1 is directed to the identified abstract
idea. Final 4.

V. Does the claim provide an inventive concept?
A. Step 2B of the Guidance
To determine whether a claim provides an inventive concept, the
additional elements are considered—individually and in combination—to
determine whether (1) they add a specific limitation beyond the judicial
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exception that is not well-understood, routine, and conventional in the field
or (2) they simply append well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. Guidance, 84 Fed. Reg. at 56. Also, we
reevaluate the conclusions about the additional elements from Step 2A,
Prong Two. Id.
B. transmitting and receiving
Claim 1 recites, in part, “receiving, at an optimizer comprising a
processing device, a respective service level agreement,” “receiving a
request from a requesting computer for the computing resource,” and
“transmitting a counter-offer.” Appeal Br. 25 (Claims App.)
In OIP, the Federal Circuit determined that, in the claims at issue,
“sending a first set of electronic messages over a network to devices”
encompassed well-understood, routine, and conventional activity. 788 F.3d
at 1363. Also, the MPEP instructs examiners that courts recognize that
receiving or transmitting data over a network may be well‐understood,
routine, and conventional activity when claimed generically. MPEP
§ 2106.05(d)(II)(i) (collecting cases).
Here, the receiving and transmitting steps are claimed without specific
details about how the data is sent and received. Rather, the steps merely limit
the type of data that is sent and received. Thus, we agree with the Examiner
that claim 1 merely uses a computer to transmit and receive data in a well‐
understood, routine, and conventional way. Final 6.
We also reevaluate our conclusions about whether the transmitting
and receiving steps integrate the abstract idea into a practical application.
See supra § IV.B. Because the steps add nothing more than well-understood,
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routine, and conventional activities, those conclusions stand. Considering
both our previous conclusions and the findings about well‐understood,
routine, and conventional activity, we determine that the claimed
transmitting and receiving steps do not indicate that the claim provides an
inventive concept.
C. “optimizer”
Claim 1 recites, in part, “an optimizer comprising a processing
device.” Appeal Br. 25 (Claims App.)
Here, claim 1 uses the optimizer for receiving data. There is no
indication that the claimed receiving requires any specialized computer
function. Rather, the optimizer can be a general-purpose computer.
Spec. 14:18. Using a computer for its basic function may not impose
meaningful limits on the abstract idea. See Bancorp Servs. v. Sun Life
Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“The
computer required by some of Bancorp’s claims is employed only for its
most basic function, the performance of repetitive calculations, and as such
does not impose meaningful limits on the scope of those claims.”) Also, the
MPEP instructs examiners that courts recognize that receiving or
transmitting data over a network may be well‐understood, routine, and
conventional activity when claimed generically. MPEP § 2106.05(d)(II)(i)
(collecting cases). Thus, the Examiner has shown that, here, the claimed
optimizer is well‐understood, routine, and conventional. Final 5–6 (quoting
Spec. 14:15–22).
We also reevaluate our conclusions about whether the optimizer
integrates the abstract idea into a practical application. See supra § IV.C.
Because the device adds nothing more than well-understood, routine, and
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conventional activities, those conclusions stand. Considering both our
previous conclusions and the findings about well‐understood, routine, and
conventional activity, we determine that the claimed optimizer does not
indicate that the claim provides an inventive concept.
D. “storing”
Claim 1 recites, in part, “storing to a memory each service level
agreement, information identifying the provider associated with each
respective service level agreement, and information identifying the
computing resource associated with each respective service level
agreement.” Appeal Br. 25 (Claims App.)
Here, the storing step is claimed generically. Similarly, the Federal
Circuit has determined that “storing test results in a ‘machine-readable
medium’” was well-understood, routine, and conventional activity
previously known to the industry. OIP Techs., 788 F.3d at 1363; see also
Versata, 793 F.3d at 1334 (determining that “storing pricing information,
retrieving applicable pricing information” were well-understood, routine,
and conventional activity). The MPEP also instructs examiners that courts
have recognized the function of “[s]toring and retrieving information in
memory” as well‐understood, routine, and conventional functions when they
are claimed generically. MPEP § 2106.05(d)(II) (citing Versata, 793 F.3d at
1334). Here, the storing step requires no more than a generic computer. See
Spec. 14:15–22 (describing a general-purpose computer). Thus, we agree
with the Examiner that the recording and storing, as generically recited in
claim 1, is well‐understood, routine, and conventional activity. See Final 6.
We also reevaluate our conclusions about whether the recited storing
step integrates the abstract idea into a practical application. See supra
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§ IV.D. Because this step adds nothing more than well-understood, routine,
and conventional activities, those conclusions stand. Considering both our
previous conclusions and the findings about well‐understood, routine, and
conventional activity, we determine that the claimed storing step does not
indicate that the claim provides an inventive concept.
E. The Combination
Appellant does not identify any inventive concept in the recited
combination of steps or any specific arrangement of computing components.
See Appeal Br. 14–22; Reply Br. 2–5. Although Appellant argues that the
claim “requires much more than a generic ‘abstract idea’ or ‘generic
computer structure,’” the limitations that Appellant has identified relate to
the recited business relations or commercial interactions. Appeal Br. 22.
Here, the purported improvement is to “fulfilling requests for
computing resources with computing resources internal to the enterprise
according to modified terms rather than with computing resources external
to the enterprise according to the requested terms.” Reply Br. 4. But for the
reasons discussed, this is part of the abstract idea itself. See supra § III. Yet
“[w]hat is needed is an inventive concept in the non-abstract application
realm.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018). “[A] claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016).
Appellant argues that “Claim 1 clearly does not preempt all methods
for fulfilling requests for computing resources to display and displaying
potential information technology resources to a user.” Appeal Br. 17. But the
absence of complete preemption is not dispositive. See, e.g., Ariosa
Appeal 2018-005703
Application 12/713,557

20
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(“While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.”) Rather,
“questions on preemption are inherent in and resolved by the § 101
analysis.” Id.
On this record, claim 1’s limitations—considered individually and in
combination—do not provide an inventive concept.
F. Conclusion
Appellant has not persuaded us that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 101. Thus, we sustain the rejection of
representative claim 1 and claims 2, 4–8, 10–14, are 16–23, which are not
argued separately. See supra n.4.

CONCLUSION
We affirm the Examiner’s decision to reject claims 1, 2, 4–8, 10–14,
and 16–23.
Claims
Rejected
35 U.S.C. § Reference(s) Affirmed Reversed
1, 2, 4–8,
10–14,
16–23
101 Eligibility 1, 2, 4–8, 10–
14, 16–23

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).

AFFIRMED