HEWLETT PACKARD ENTERPRISE DEVELOPMENT LP

Patent Trials and Appeals Board

Dec 24, 2020

2020003093 (P.T.A.B. Dec. 24, 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.
15/033,084 04/28/2016 Yariv Snapir 90199896 8284
146568 7590 12/24/2020
MICRO FOCUS LLC
500 Westover Drive
#12603
Sanford, NC 27330
EXAMINER
EVANS, KIMBERLY L
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
12/24/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
software.ip.mail@microfocus.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YARIV SNAPIR, GAD SAKIN, LEONID REZNIK,
DAVID BARON, and MICHAEL DIKAMN
____________

Appeal 2020-003093
Application 15/033,084
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
BRUCE T. WIEDER, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims a system for end user trend identification to identify
information gaps. (Spec. ¶ 9, Title).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as MICRO
FOCUS LLC (Appeal Br. 2).
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Claim 1 is representative of the subject matter on appeal.
1. A method, comprising:
tracking end user interactions with an information
technology support system;
at multiple points in time, determining a count of
unresolved end user technical issues based on the end user
interactions with the information technology support system,
wherein the unresolved end user technical issues affect end user
computing devices that are separate from the information
technology support system;
determining whether the determined count of unresolved
end user technical issues has increased over a period of time;
and
identifying a number of information gaps within the
information technology support system based on a
determination that the determined count of unresolved end user
technical issues has increased over the period of time.

THE REJECTIONS
Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 7–11 and 20 are rejected under 35 U.S.C. § 112(b) as lacking
antecedent basis.
Claims 1, 4–8, 10–15, 17, 18, and 20 are rejected under 35 U.S.C.
§ 103 as unpatentable over Aoshi (JP 2005310183 A, Nov. 4, 2005) and
Shinichi (JP 2001125901 A, May 11, 2001).
Claims 2, 9, and 16 are rejected under 35 U.S.C. § 103 as
unpatentable over Aoshi, Shinichi, and Choi (WO 2004090776 A1, Oct. 21,
2004).
Claims 3 and 19 are rejected under 35 U.S.C. § 103 as unpatentable
over Aoshi, Shinichi, and Douglas (US 2005/0060217 A1, Mar. 17, 2005).
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ANALYSIS
35 U.S.C. § 112 REJECTION
Appellant has not presented arguments in response to this rejection;
therefore, we summarily affirm this rejection.

35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1–20 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, . . . then ask, “[w]hat else
is there in the claims before us?” To answer that question, . . .
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. [The Court] described step two of this
analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012))
(citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp.
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v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks
whether the focus of the claims is on a specific improvement in relevant
technology or on a process that itself qualifies as an “abstract idea” for
which computers are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 50–57 (Jan. 7, 2019) (“Guidance”).
The Examiner determines that the claims are directed to a process
that, under its broadest reasonable interpretation, covers performance of
these limitations in the mind but for the recitation of generic computer
components, and thus grouped as concepts relating to organizing or
analyzing information in a way that can be performed mentally or is
analogous to human mental work (Final Act. 10). The Examiner finds that
the judicial exception is not integrated into a practical application because
the additional elements of a computer-implemented method are recited at a
high-level of generality and under the broadest reasonable interpretation
includes generic computer and networking components performing generic
computer functions. (Id. at 10–11).
The Specification discloses that information systems can include
various information that can be utilized by end users. Information
technology managers can be responsible for creating additional information
for the information system to eliminate the issue of the lack of information.
(Spec. ¶ 1). End user trend identification to identify information gaps can be
utilized to analyze trends of the number of end user technical issues over a
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period of time (Spec. ¶ 7). As such, the Specification is clear that the
invention relates to organizing or analyzing information related to end users.
Consistent with this disclosure, claim 1 recites a method including the
steps of “tracking end user interactions with an information technology
support system,” “determining a count of unresolved end user technical
issues,” “determining whether the determined count . . . has increased over
the period of time,” and “identifying a number of information gaps.” These
steps involve evaluation and judgment. See Guidance, 84 Fed. Reg. at 52.
We thus agree with the Examiner’s determination; and we treat
“analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category.” Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1354 (Fed. Cir. 2016). Thus, we find that claim 1 recites the
judicial exception of a mental process.
Turning to the second prong of the “directed to test,” claim 1 requires
an “information technology support system” and an “end user computing
device.” These recitations do not impose “a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception” and thus does not integrate the judicial
exception of a mental process into a practical application. Guidance, 84
Fed. Reg. at 53. We find no indication in the Specification, nor does
Appellant direct us to any indication, that the operations recited in claim 1
invoke any inventive programming, require any specialized computer
hardware or other inventive computer components, i.e., a particular machine,
or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions. See DDR
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Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)
(“[A]fter Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the revised Guidance.2 See Guidance, 84 Fed. Reg.
at 55.
In this regard, the recitations do not affect an improvement in the
functioning of the information technology support system, the end user
computing device or other technology, does not recite a particular machine
or manufacture that is integral to the claims, and does not transform or
reduce a particular article to a different state or thing. Id. Thus, claim 1 is
directed to a judicial exception that is not integrated into a practical
application and thus claim 1 is directed to an “abstract idea.”
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to an abstract idea, claim 1 must include an “inventive
concept” in order to be patent-eligible, i.e., there must be an element or
combination of elements that is sufficient to ensure that the claim in practice

2 “A claim that integrates a judicial exception into a practical application
will 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 54.
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amounts to significantly more than the abstract idea itself. See Alice, 573
U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
The introduction of a computer in the form of an information
technology support system and a user computing device into the claim does
not alter the analysis at Alice step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
Instead, the relevant question is whether claim 1 here does more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer. Id. at 225. It does not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to monitor data (track end user interactions), analyze/process data
(determine a count of unresolved issues, determine whether the count has
increased), and identify a number of gaps amounts to electronic data query,
retrieval, and analysis—one of the most basic functions of a computer. All
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of these computer functions are well-understood, routine, conventional
activities previously known to the industry. See Elec. Power Grp., 830 F.3d
at 1354; see also In re Katz Interactive Call Processing Patent Litig., 639
F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction
of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can
be achieved by any general purpose computer without special
programming.”). In short, each step does no more than require a generic
computer to perform generic computer functions. As to the data operated
upon, “even if a process of collecting and analyzing information is ‘limited
to particular content’ or a particular ‘source,’ that limitation does not make
the collection and analysis other than abstract.” SAP Am. Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction); Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract); Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
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Claim 1 does not, for example, purport to improve the functioning of
the information technology support system or the user computing device.
As we stated above, claim 1 does not affect an improvement in any other
technology or technical field. The Specification spells out different generic
equipment and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of information access under different scenarios (see, e.g., Spec.
¶¶ 10, 16, 34–35). Thus, claim 1 at issue amounts to nothing significantly
more than instructions to apply the abstract idea of information access and
analysis using some unspecified, generic computer. Under our precedents,
that is not enough to transform an abstract idea into a patent-eligible
invention. See Alice, 573 U.S. at 226.
We have reviewed all the arguments (Appeal Br. 14–18; Reply Br. 5–
7) Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of emphasis, we will address various
arguments in order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the steps of claims 1, 3, and 12 cannot be
performed entirely in the human mind (Appeal Br. 14). The Appellant
further argues that there has been no citation or explanation regarding how a
human mind alone is believed to be somehow capable of counting
unresolved technical issues based on user interactions with an IT support
system. However, there is no assertion by the Examiner that all the steps of
the claims can be performed by the human mind alone. To the contrary, the
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Examiner recognizes that the claim steps are performed by the information
technology support system and the end user device when analyzing whether
these recitations integrate the abstract idea into a practical application and
whether they amount to significantly more than the abstract idea. In any
case, if a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still encompassed by the mental processes category.
See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented
steps, there is nothing in the claims themselves that foreclose them from
being performed by a human, mentally or with pen and paper.”); Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed.
Cir. 2016) (holding that computer-implemented method for “anonymous
loan shopping” was an abstract idea because it could be “performed by
humans without a computer”); Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d
1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that required the
use of a computer and still found that the underlying, patent-ineligible
invention could be performed via pen and paper or in a person's mind.”);
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 1372–73
(Fed. Cir. 2011) (holding that the incidental use of “computer” or “computer
readable medium” does not make a claim otherwise directed to process that
“can be performed in the human mind, or by a human using a pen and
paper” patent eligible).
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the Examiner failed to give weight to the
recitation in claim 1 of “track end user interactions.” In this regard,
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Appellant argues that this recitation should be considered to be “additional
elements” and therefore the Examiner was required to determine whether
this step was well-understood, routine, and conventional (Appeal Br. 16).
However, this step is part of the abstract idea of organizing or analyzing
information. We note “[i]t has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018). Moreover, “[n]o matter how much of an advance in
the . . . field the claims recite, the advance lies entirely in the realm of
abstract ideas, with no plausibly alleged innovation in the non-abstract
application realm.” SAP Am. Inc., 898 F.3d at 1163; see also id. at 1168.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the Examiner failed to consider whether claim 12
is directed to improving computer-related technology (Reply Br. 5). The
Examiner determined that claim 12 recites substantially similar limitations
as independent claim 1 and thus includes claim 12 in the analysis of claim 1.
(Final. Act. 15). The Examiner stated on page 11 of the Final Action that the
invention covers an abstract idea but for the recitation of generic computer
components. This determination was made in consideration of whether the
claims improve computer-related technology. The Examiner also stated on
the same page that the judicial exception is not integrated into a practical
application because the additional elements are recited at a high-level of
generality and perform generic computer functions. The Examiner also
stated on page 12 that the determining steps are recited at a high level of
generality and perform well-understood, routine, and conventional functions
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when claimed in a merely generic manner.
We do not agree with Appellant that the Examiner failed to analyze
any of the dependent claims. The dependent claims are analyzed on page 15
of the Final Action by the Examiner who determined that the dependent
claims fail to cure the deficiencies of the above noted independent claims
and that the additional limitations in the dependent claims do not amount to
a claim as a whole that is significantly more than the abstract idea. We also
note that the Federal Circuit has, in at least one case, found it unnecessary to
address those claims when they recite little more than the same abstract idea
and certain claims are analyzed as representative. Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat. Ass'n, 776 F.3d 1343, 1348
(Fed. Cir. 2014).
In view of the foregoing, we will sustain the Examiner’s rejection of
claims 1, 3, and 12. We will also sustain the rejection as it is directed to the
remaining claims for the same reasons.

REJECTION UNDER 35 U.S.C. § 103(A)
We will not sustain this rejection because we agree with Appellant
that the prior art does not disclose “determining a count of unresolved end
user technical issues” as required by claim 1. The Examiner relies on
Shinichi at paragraph 16 for teaching this subject matter (Final Act. 18).
However, we find that while paragraph 16 of Shinichi describes an
automatic question answering system that analyzes the content of unresolved
data among inputted questions data, there is no disclosure that this
unresolved data relates to user technical issues much less “wherein the
unresolved end user technical issues affect end user computing devices.”
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This subject matter is required by each of the appealed claims.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–20 under
35 U.S.C. § 101.
We conclude the Examiner did not err in rejecting claims 7–11, and
20 under 35 U.S.C. § 112(b).
We conclude the Examiner did err in rejecting claims 1–20 under
35 U.S.C. § 103.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
7–11, 20 112(b) Indefiniteness 7–11, 20
1, 4–8,
10–15, 17,
18, 20
103 Aoshi, Shinichi 1, 4–8,
10–15, 17,
18, 20
2, 9, 16 103 Aoshi, Shinichi,
Choi
2, 9, 16
3, 19 103 Aoshi, Shinichi,
Douglas
3, 19
Overall
Outcome
1–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED