Garg, Vibhav et al.

Patent Trials and Appeals Board

Jul 2, 2020

2019000879 (P.T.A.B. Jul. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/176,871 06/08/2016 Vibhav Garg M102103 1170US1 15001 8105
148646 7590 07/02/2020
WOMBLE BOND DICKINSON (US) LLP/Satori Worldwide LL
Attn: IP Docketing
P.O. Box 7037
Atlanta, GA 30537-7037
EXAMINER
LE, JOHN H
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
07/02/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDocketing@wbd-us.com
patents@mz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VIBHAV GARG, RENAT IDRISOV, TIMOFEY BARMIN,
ANDREY VASENIN, VADIM LITVINOV, and DMITRY IVANOV1
____________

Appeal 2019-000879
Application 15/176,871
Technology Center 2800
____________

Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–30 as ineligible under 35 U.S.C. § 101. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to systems and methods of testing
computer systems. Spec. 1:23–24; Claim 1. Claim 1 is reproduced below
from page 21 (Claims Appendix) of the Appeal Brief:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Satori
Worldwide, LLC. See Appeal Br. 2.
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1. A method of testing a first computer system, the method
comprising:
implementing a first pool of workers on a plurality of nodes of a
second computer system, each node comprising one or more of
the workers from the first pool;
providing a set of instructions to the first pool of workers for
performing a first task configured to introduce a workload on the
first computer system, wherein the first computer system is
separate from the second computer system comprising the first
pool of workers;
employing the first pool of workers of the second computer
system to perform the first task configured to introduce the
workload on the first computer system; and
monitoring, by one or more computer processors, at least one
performance metric associated with the first computer system
under the workload while the workers from the first pool of the
second computer system are performing the first task.
ANALYSIS
Claims 1–30 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. The Appellant argues the claims as a group.
See generally Appeal Br. We select claim 1 as representative, and the
remaining claims on appeal will stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2017).
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejection.
Accordingly, we affirm the rejection for reasons set forth below, in the Final
Action dated January 22, 2018, and in the Examiner’s Answer.
Determining whether a claimed invention is patent eligible under
§ 101 is a two-step process that requires (1) evaluating whether the claim is
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directed toward a patent-ineligible concept, i.e., a law of nature, natural
phenomenon, or abstract idea; and, if so, (2) determining whether the
claim’s elements, considered both individually and as an ordered
combination, transform the nature of the claim into a patent-eligible
application. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18
(2014).
As to step (1) of Alice, the Examiner determines in the Final Action
that claim 1 is directed to abstract ideas and identifies several claim
recitations that encompass abstract ideas. See Final Act. 2–4. The Examiner
finds, inter alia, that the recited “monitoring” step involves the collection
and comparison of known information, and the Examiner asserts that similar
claims have been held ineligible by the Federal Circuit. Id. at 3.
As to step (2) of Alice, the Examiner determines that “[t]he additional
elements when considered both individually and as a combination do not
amount to significantly more than the abstract idea” because the additional
elements are generic “computing devices” that perform “generic functions
without an inventive concept.” Id. at 3–4. In the Examiner’s Answer, the
Examiner cites several references in support of the Examiner’s finding that
the additional elements are “routine, well-known, and conventional.”
Ans. 4.
Relevant to step (1) of Alice, the Appellant argues that claim 1 is “not
directed to ‘a fundamental economic practice,’” Appeal Br. 6, and that “the
claims . . . do not recite a mathematical algorithm,” id. at 9. The Appellant
also argues the claims “improv[e] scalability” of computer testing methods,
id. at 7, and that the claims “are limited to technical systems and methods for
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performing functions that are an advance over conventional computer and
network technology,” id. at 11.
Relevant to step (2) of Alice, the Appellant argues “the claims amount
to significantly more than an abstract idea” because they “offer
improvements to the field of workload testing for performing a stress test on
a computer system or system under test.” Id. at 14–15.
Legal Framework
In determining whether a claim falls within a category excluded from
eligible subject matter, our inquiry focuses on the Supreme Court’s two-step
framework described in Mayo and Alice, set forth above. Alice, 573 U.S. 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. Concepts determined
to be abstract ideas, and thus patent ineligible, include certain methods of
organizing human activity (Alice, 573 U.S. at 219–20; Bilski v. Kappos, 561
U.S. 593, 611 (2010)) and mental processes (Gottschalk v. Benson, 409 U.S.
63 (1972)).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks 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. (alterations in original) (quoting Mayo,
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566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
In January 2019, the USPTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).2 “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” Id. at 51.
Under the 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 MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. 2018)).
Guidance, 84 Fed. Reg. at 52–55. 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.
Guidance, 84 Fed. Reg. at 52–56.

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
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Judicial Exception (Guidance step (1))
Consistent with the Examiner’s analysis, claim 1 recites steps of
“implementing a first pool of workers,” “providing a set of instructions to
the first pool of workers,” and “employing the first pool of workers” to
perform a task. Those steps concern managing behavior of people, including
providing rules or instructions to be followed. See Guidance, 84 Fed. Reg.
at 52 & n.13 (“Certain methods of organizing human activity” include
“managing personal behavior or relationships or interactions between people
(including . . . following rules or instructions).”). Accordingly, those steps
recite certain methods of organizing human activity, as contemplated by the
Guidance. See id.
Claim 1 also recites a step of “monitoring, by one or more computer
processors, at least one performance metric associated with the first
computer system under the workload while the workers from the first pool
of the second computer system are performing the first task.” The Guidance
states that, “[i]f a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.” Guidance, 84 Fed. Reg. at 52
n.14 (citing several Federal Circuit cases).
Under its broadest reasonable interpretation, we find that the
“monitoring” step of claim 1 could be performed in the mind but for
recitation of generic computer components (i.e., “by one or more computer
processors.”). Claim 1 does not identify any specific performance metric
that is to be monitored; nor does claim 1 limit the way in which the metric is
monitored. Apart from the recitation of generic computer components, the
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claim encompasses, for example, a person observing a computer display that
shows a line graph of a property of the first computer system. Cf.
Spec. 15:30–16:5, Figs. 7 & 8. The recitation of generic computer
components in claim 1 is similar to the recitation of generic computer
components in Example 37, Claim 3, of the USPTO’s Subject Matter
Eligibility Examples. See Subject Matter Eligibility Examples: Abstract
Ideas, at 4, available at https://www.uspto.gov/sites/default/files/documents/
101_examples_37to42_20190107.pdf (last accessed June 19, 2020)
(explaining that the step of “determining, by a processor, the amount of use
of each icon over a predetermined period of time” recites a mental process
(emphasis added)).
Thus, even assuming that the Appellant is correct that claim 1 does
not recite a mathematical algorithm or a fundamental economic practice, see
Appeal Br. 6, 9, in accordance with the Guidance we determine that claim 1
recites certain methods of organizing human activity and mental processes,
and thus recites an abstract idea. See Guidance, 84 Fed. Reg. at 52–55.
Integration into a Practical Application (Guidance step (2))
Turning to step (2) of the Guidance, we determine that claim 1, as a
whole, does not integrate the judicial exception into a practical application.
Integration into a practical application requires an additional element or a
combination of additional elements in the claim to “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.” Guidance, 84 Fed. Reg. at 53–54; see
also id. at 55 (setting forth exemplary considerations indicative that an
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additional element or combination of elements may have integrated the
judicial exception into a practical application).
Consistent with the Examiner’s findings, see Final Act. 2–4, claim 1
recites an “implementing” step, a “providing” step, an “employing” step, and
a “monitoring” step. The “implementing” step specifies that a “pool of
workers” are implemented on “a plurality of nodes of a second computer
system.” See Claim 1. This step encompasses as few as two workers
operating on two nodes.
The “providing” step specifies that a generic “set of instructions” is
provided to the pool of workers, and that the instructions describe a generic
“task configured to introduce a workload” on the computer system being
tested. See id. Other than the requirement that the task “introduce a
workload,” the task is not limited.
The “employing” step specifies that the workers are used “to perform
the first task.” See id.
And, as described above, the “monitoring” step specifies that at least
one “performance metric” is monitored while the workers perform the first
task. See id.
As is evident from the steps described above, the claim recites the use
of workers using a plurality of nodes (e.g., remote computers) to generate a
workload on a system that is being tested, and it recites that the performance
of the system being tested is monitored while under the workload. The
Examiner finds, and we agree, that the limitations beyond the “monitoring”
step link the monitoring step to a particular technological environment or
field of use, using generic computer equipment, and do not integrate the
judicial exception into a practical application. See Final Act. 3–4; cf. Alice,
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573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.”).
Additionally, as set forth above, the limitations other than the “monitoring”
step concern methods of organizing human activity.
Citing DDR Holdings v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014),
the Appellant argues that the claims at issue are patent eligible because they
are rooted in computer technology and are not directed to a fundamental
economic practice. Appeal Br. 5–6. We addressed the argument concerning
whether the claims are directed to a fundamental economic practice above.
As to the Appellant’s reliance on DDR Holdings, critical to the eligibility
outcome in that case was the Federal Circuit’s determination that the recited
limitations were not “operating in [their] normal, expected manner,” and that
“the claims recite an invention that is not merely the routine or conventional
use of the Internet.” 773 F.3d at 1258–59. In this case, the computer
systems appear to be operating in their ordinary manner. We are not
persuaded that any similarities of the claims at issue in this case to the
claims at issue in DDR Holdings indicate reversible error in the Examiner’s
rejection.
The Appellant also relies on the following Federal Circuit cases in
support of the Appellant’s arguments that the claims recite an improvement
to technology: (1) Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016), (2) Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057
(Fed. Cir. 2011), and (3) Bascom Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). See Appeal Br. 7–17; see
also Reply Br. 3–6. We are not persuaded that the Appellant’s discussion of
any of those cases indicates reversible error in the Examiner’s rejection.
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As to Enfish, the Federal Circuit’s determination that the claims at
issue in that case recited “an improvement to computer functionality itself,
not on economic or other tasks for which a computer is used in its ordinary
capacity,” was critical to the eligibility outcome. See 822 F.3d at 1336. In
this case, the Appellant does not persuasively identify an improvement to
computer functionality itself that is encompassed by the claims. On the
contrary, the computers recited by the claims appear to be functioning in
their ordinary manner. The first computer system (the system being tested)
is not required to do anything other than be subjected to a workload. The
nodes of the second computer system are required only to “introduce a
workload on the first computer system,” and are not limited in the way that
the workload is introduced. Although the Appellant argues that an
improvement lies in the “scalability” of the claimed method, e.g., Appeal
Br. 5, we do not discern scalability to be “an improvement to computer
functionality itself” as contemplated by Enfish, particularly in view of the
fact that the claims encompass generic computers performing generic
functions to introduce a generic workload.
As to Classen, the claims at issue in that case that were determined to
be patent eligible involved the physical step of performing an immunization
after collecting and comparing data. 659 F.3d at 1060–61. We discern no
comparable physical step or tangible application in the claims at issue before
us. In particular, claim 1 simply requires “monitoring.” The monitoring can
be done in any way, it can be of any performance metric, and no action is
required to be taken as a result of the “monitoring.” We are not persuaded
that any similarities of the claims at issue here to the claims at issue in
Classen indicate reversible error in the Examiner’s rejection.
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As to Bascom, critical to the Federal Circuit’s determination of
subject matter eligibility in that case was the “non-conventional and non-
generic arrangement of known, conventional pieces.” 827 F.3d at 1350. We
are not persuaded that the recited steps of claim 1 employ a non-
conventional and non-generic arrangement of pieces. On the contrary, and
as set forth above, the “implementing,” “providing,” and “employing” steps
recite methods of organizing human activity, and they limit the “monitoring”
step to a particular technological environment comprising generic computer
equipment being used in an ordinary way. Cf. BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018) (explaining that a
claim does not become eligible merely because “it recites limitations that
render it narrower than that abstract idea”).
The Appellant also argues that the Examiner “fails to consider the
ordered combination of claim features.” Appeal Br. 17–18 (citing McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir.
2016)); Reply Br. 6–8. We disagree. The Examiner finds that the additional
elements beyond the recited abstract idea are “generic computer
component[s] storing data [and] performing generic functions without an
inventive concept,” that they pertain to “field of use [limitations] that
attempt to limit the abstract idea to a particular environment,” and that
“[l]ooking at the element[s] as a combination does not add anything more
than the elements analyzed individually.” Final Act. 3–4. As set forth
above, we are not persuaded of reversible error in those determinations.
Inventive Concept (Guidance steps (3) and (4))
Turning to steps (3) and (4) of the Guidance, the Appellant has not
shown error in the Examiner’s determination that the limitations of claim 1
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beyond the abstract idea itself are well understood, routine, and
conventional. Although the Appellant asserts that the Examiner fails to
comply with the Berkheimer Memo3 because the Examiner did not cite
evidence, Appeal Br. 19, the Appellant does not persuasively identify any
limitation of claim 1 that is not well understood, routine, and conventional,
and we observe that, in the Answer, the Examiner cites several references to
support the relevant findings. See Ans. 4. The Appellant’s continued
assertion in the Reply that the “Office action fails to provide any rebuttal
evidence to justify the assertion that the claim limitations are
‘conventional,’” Reply Br. 8, is unpersuasive because it fails to acknowledge
or address the evidence cited by the Examiner in the Answer, see Ans. 4.
On this record, having considered the limitations individually and in
combination, we are not persuaded that any step of claim 1 beyond those
encompassing the abstract idea itself recites subject matter that is not well
understood, routine, and conventional, or that claim 1 otherwise amounts to
“significantly more” than the abstract ideas to which it is directed.
We have carefully considered the Appellant’s arguments but are not
persuaded of reversible error in the Examiner’s rejection of claim 1 under
§ 101.

3 “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.
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DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § Basis Affirmed Reversed
1–30 101 Eligibility 1–30
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED