KATIYAR, Abhinav et al.

Patent Trials and Appeals Board

Jan 2, 2020

12126705 - (D) (P.T.A.B. Jan. 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.
12/126,705 05/23/2008 Abhinav KATIYAR A221 (500105-1350) 6979
152577 7590 01/02/2020
Thomas | Horstemeyer, LLP (VMW)
3200 Windy Hill Road, SE
Atlanta, GA 30339
EXAMINER
ERB, NATHAN
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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):
docketing@thomashorstemeyer.com
ipadmin@vmware.com
uspatents@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ABHINAV KATIYAR, JAGANNATH RAGHU,
HEMANTH PANNEM and MANGESH PANGARKAR

Appeal 2019-004031
Application 12/126,705
Technology Center 3600

Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Abhinav Katiyar et al.,
appeals from the Examiner’s decision rejecting claims 1–17 and 25–27.
Claims 18–24 are cancelled. 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(a). Appellant identifies the real party in interest as VMware,
Inc. See Appeal Br. 2.
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STATEMENT OF THE CASE2
The Invention
The claims are directed to systems and methods “for calculating use
charges in a virtualized infrastructure.” Title.

Exemplary Claim
We reproduce infra claim 1 in Table One.

Rejection on Appeal
Claims 1–17 and 25–27 stand rejected under 35 U.S.C. § 101 as being
directed to a judicial exception, without significantly more. See Final Act. 5.

CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 8–20) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the rejection of
claims 1–17 and 25–27 under 35 U.S.C. § 101 on the basis of representative
claim 1.3

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Nov. 7, 2018); Reply Brief (“Reply Br.,” filed April 24, 2019); Examiner’s
Answer (“Ans.,” mailed Feb. 26, 2019); Final Office Action (“Final Act.,”
mailed Aug. 9, 2018); and the original Specification (“Spec.,” filed
May 23, 2008).
3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
When Appellant does not separately argue the patentability of dependent
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ISSUES
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant.
§ 101 Rejection of Claims 1–17 and 25–27
Issue
Appellant argues (Appeal Br. 8–20; Reply Br. 3–24) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. Appellant’s contentions present us with
the following issue:
Under the USPTO’s Revised Guidance, as informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent ineligible under
§ 101?
Principles of Law
A. 35 U.S.C. § 101
“Eligibility under 35 U.S.C. § 101 is a question of law, based on
underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166
(Fed. Cir. 2018).
An invention is patent eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.4
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include

claims, the claims stand or fall with the claims from which they depend. See
In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. See MPEP § 2106.
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implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). 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, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “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))).
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In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view
respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is
now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
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 (citation omitted). “A claim
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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, 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.
B. USPTO 2019 Revised Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).

Under the Revised 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);5 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)).6
See Revised Guidance 52–53.

5 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
6 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
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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.7
See Revised Guidance 56.
Step 2A(i) — Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Revised Guidance 52 (footnotes omitted).

7 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent
eligible at Step 2A(i). This determination concludes the eligibility analysis.8
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), then the claim
requires further analysis to determine if the judicial exception is integrated
into a practical application in Step 2A(ii).
Step 2A(ii) — Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
For example, limitations that are indicative of integration into a
practical application include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);

8 In the rare circumstance in which an Examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
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3. Effecting a transformation or reduction of a particular
article to a different state or thing — see MPEP
§ 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological
environment, such that the claim as a whole is more than
a drafting effort designed to monopolize the exception
— see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
See Revised Guidance, 84 Fed. Reg. at 54–55 (Step 2A, “Prong Two”).
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then the analysis
proceeds to Step 2B.
Step 2B — “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible a claim that does
not “integrate” a recited judicial exception under Step 2A(ii) is nonetheless
patent eligible. For example, the claim may recite additional elements that
render the claim patent eligible even though a judicial exception is recited in
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a separate claim element.9 The Federal Circuit has held claims eligible at
the second step of the Alice/Mayo test (USPTO Step 2B) because the
additional elements recited in the claims provided “significantly more” than
the recited judicial exception (e.g., because the additional elements were
unconventional in combination).10 Therefore, if a claim has been
determined to be directed to a judicial exception under the Revised Guidance
Step 2A, prong two, we must also evaluate the additional elements
individually and in combination under Step 2B to determine whether they
provide an inventive concept (i.e., whether the additional elements amount
to significantly more than the exception itself).11
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present”; or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative

9 See, e.g., Diehr, 450 U.S. at 187.
10 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
11 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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that an inventive concept may not be present.” See Revised Guidance,
Section III.B.12
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
Examiner finds an evidentiary basis, and expressly supports a rejection in
writing with one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See Berkheimer Memorandum.

12 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum. For more information concerning evaluation of well-
understood, routine, conventional activity, see MPEP § 2106.05(d), as
modified by the USPTO Berkheimer Memorandum (USPTO Commissioner
for Patents Memorandum dated Apr. 19, 2018, “Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter “Berkheimer
Memorandum”).
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The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or
(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be
present.
Revised Guidance, and see Berkheimer Memorandum.
If the Examiner or the Board determines under Step 2B that the
element (or ordered combination of elements) amounts to significantly more
than the exception itself, then the claim is patent eligible.
However, if a determination is made that the additional element (or
combination of elements) does not amount to significantly more than the
exception itself, the claim is ineligible under Step 2B, and the claim should
be rejected as being patent ineligible.
ANALYSIS
Step 1 — Statutory Category
Claim 1 is a method (process) claim, which is one of the statutory
categories of subject matter enumerated under 35 U.S.C. § 101.

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Step 2A, Prong 1: Does the Claim Recite a Judicial Exception?
The Examiner determined: “[c]laims 1–17 and 25–27 recite the
activities of creating mappings between different elements, retrieving data
related to usage and billing, calculating charges based on retrieved
parameters, and updating data related to usage and billing.” Final Act. 6
(underline omitted).
We evaluate, de novo, whether claim 1 recites an abstract idea based
upon the Revised Guidance.
In TABLE 1 below, we identify in italics the specific claim
limitations that we conclude recite an abstract idea. We additionally identify
in bold the additional (non-abstract) claim limitations that are generic
computer components and techniques:
TABLE 1
Independent Claim 1 Revised Guidance
(a) A method for calculating
computing resource use charges for a
data center consumer entity, the data
center consumer entity accessing one
or more of a plurality of computing
resources in a data center hierarchy,
the data center consumer entity being
a member of an organization
hierarchy, the method including
methods steps executed by a
computer, the method steps
comprising:
Calculating computing resource
use charges is an abstract idea,
i.e., “Mathematical concepts —
mathematical relationships,
mathematical formulas or
equations, mathematical
calculations” that could be
performed alternatively as a
mental process. See Revised
Guidance 52.

Charging for resource use is also
a certain method of organizing
human activity including
commercial interactions, sales
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Independent Claim 1 Revised Guidance
activities, and business relations.
See Revised Guidance 52.
(b) creating mappings between one or
more members of the organization
hierarchy and one or more members
of the data center hierarchy in a
database, the organization hierarchy
including a plurality of data center
consumer entities arranged in a parent-
child form and the data center
hierarchy including one or more
physical hosts and one or more virtual
machines running on the one or more
physical hosts, each host including the
plurality of computing resources,
wherein each of the plurality of
computing resources includes at least
one of a CPU, a disk, a Network
Interface Card (NIC), and a
memory, each virtual machine
comprising a plurality of virtual
computing resources and including at
least one of a virtual CPU and a
virtual NIC, the one or more members
of the organization hierarchy being not
part of the data center hierarchy,
wherein the mappings include a
mapping between a particular member
of the organization hierarchy and a
particular member of the data center
hierarchy defining at least one
computing resource of the particular
member of the data center hierarchy as
being reserved for use by the
particular member of the organization
hierarchy;
Creating mappings is an abstract
idea, i.e., “concepts performed
in the human mind, including an
observation, evaluation
judgment, opinion” that could be
performed alternatively as a
mental process.” See Revised
Guidance 52.
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Independent Claim 1 Revised Guidance
(c) retrieving usage data of each of the
plurality of computing resources
using an application programming
interface (API), the usage data being
retrieved for a selected period of use
of each of the plurality of computing
resources by either the data center
consumer entity or a parent entity of
the data center consumer entity;
Retrieving usage data of each of
the plurality of computing
resources, i.e., data gathering, is
insignificant extra-solution
activity. Revised Guidance 55,
n.31; see also MPEP
§ 2106.05(g).

(d) retrieving a rate plan data for the
data center consumer entity from the
database;
Retrieving rate plan data, i.e.,
data gathering, is insignificant
extra-solution activity. Revised
Guidance 55, n.31; see also
MPEP § 2106.05(g).
(e) retrieving base rate and rate factor
for each of the plurality of
computing resources from the
database, wherein the rate factor of a
computing resource within the data
center hierarchy is different from the
rate factor of a child node of the
computing resource within the data
center hierarchy;
Retrieving base rate and rate
factor data, i.e., data gathering,
is insignificant extra-solution
activity. Revised Guidance 55,
n.31; see also MPEP
§ 2106.05(g).

(f) using a cost calculation module
executing in a computer server,
calculating a charge for usage of
billed units for each of the plurality of
the computing resources using the
base rate and the rate factor, wherein
the charge is based on a maximum
usage of one or more of the computing
resources, the billed units include one
of actual used units or reserved units,
wherein the rate plan data includes
information whether the actual used
units or the reserved units are to be
Calculating usage charges is an
abstract idea, i.e., “Mathematical
concepts — mathematical
relationships, mathematical
formulas or equations,
mathematical calculations” that
could be performed alternatively
as a mental process. See
Revised Guidance 52.
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Independent Claim 1 Revised Guidance
used in calculating the charge,
wherein calculating the charge for
usage of the billed units for each of
the plurality of the computing
resources comprises specifying a
varying cost of access of a particular
computing resource depending upon
particular time periods and varying the
charge based on the varying cost of
access and the selected period of use
of each of the plurality of computing
resources;
(g) using the cost calculation module
executing in the computer server,
calculating a charge for the data
center consumer entity to access one
or more of the virtual computing
resources of a particular VM of the
one or more virtual machines based
on the usage of computing resources
to operate a physical host on which
the particular VM is running, wherein
the particular VM is a child of the
physical host within the data center
hierarchy;
Calculating charges is an
abstract idea, i.e., “Mathematical
concepts — mathematical
relationships, mathematical
formulas or equations,
mathematical calculations” that
could be performed alternatively
as a mental process. See
Revised Guidance 52.
(h) using the cost calculation module
executing in the computer server,
aggregating use charges for a child
consuming entity to the parent entity
of the child consuming entity in the
organization hierarchy; and
Aggregating use charges is an
abstract idea, i.e., “Mathematical
concepts — mathematical
relationships, mathematical
formulas or equations,
mathematical calculations” that
could be performed alternatively
as a mental process. See Revised
Guidance 52.
(i) using the cost calculation module
executing in the computer server,
Waiving a usage charge during a
time period when the usage data
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Independent Claim 1 Revised Guidance
waiving a usage charge during a time
period when the usage data is
unavailable.

is unavailable is insignificant
post-solution activity. Revised
Guidance 55, n.31; see also
MPEP § 2106.05(g); and see
buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir.
2014) (determining a claim
reciting a computer that receives
and sends information over a
network is directed to an
abstract idea).
Appeal Br. 22–24 (Claims App’x.).
We conclude that calculation of computer resource use charges in a
data center is a fundamental economic practice, which includes commercial
interactions, sales activities, and business relations. See Revised Guidance
52. The abstract limitations of claim 1 (as identified in TABLE 1) also
recite mathematical relationships that could be performed alternatively as
mental processes, with the aid of pen and paper.13 Parker v. Flook, 437 U.S.

13 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
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584, 594–95 (1978); SAP America Inc. v. InvestPic, LLC, 898 F.3d 1161,
1167 (Fed. Cir. 2018).
Thus, under Step 2A(i), we agree with the Examiner that claim 1’s
“activities of creating mappings between different elements, retrieving data
related to usage and billing, calculating charges based on retrieved
parameters, and updating data related to usage and billing” recite judicial
exceptions under our Revised Guidance, and thus an abstract idea.
Additional Limitations
As emphasized in bold in TABLE 1, supra, we note the additional
non-abstract limitations, inter alia, for example (claim 1):
[a] “one or more of a plurality of computing resources,” and “a
computer”
[b] “a database,” “wherein each of the plurality of computing
resources includes at least one of a CPU, a disk, a Network Interface
Card (NIC), and a memory”
[f] “a computer server”
[g] “a physical host”
We further note the supporting exemplary descriptions of generic
computer components in the Specification, for example:
Any of the operations described herein that form part of
one or more embodiments of the invention are useful machine
operations. One or more embodiments of the invention also
relates to a device or an apparatus for performing these
operations. The apparatus may be specially constructed for the
required purposes, such as the carrier network discussed above,
or it may be a general purpose computer selectively activated
or configured by a computer program stored in the computer. In
particular, various general purpose machines may be used
with computer programs written in accordance with the
teachings herein, or it may be more convenient to construct a
more specialized apparatus to perform the required operations.
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Spec. ¶ 33 (emphasis added).
One or more embodiments of the invention may be
practiced with other computer system configurations including
hand-held devices, microprocessor systems, microprocessor-
based or programmable consumer electronics, minicomputers,
mainframe computers and the like. The invention may also be
practiced in distributing computing environments where tasks
are performed by remote processing devices that are linked
through a network.
Spec. ¶ 36.
We emphasize that McRO, Inc. v. Bandai Namco Games Am. Inc.,
(837 F.3d 1299 (Fed. Cir. 2016)), guides: “[t]he abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly
v. Morse, 56 U.S. 62, 113 (1853)) (emphasis added). See supra TABLE 1.
Because we conclude all claims 1–17 and 25–27 on appeal recite an abstract
idea, as identified above, under Step 2A, Prong One, we proceed to Step 2A,
Prong Two.
2019 Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Pursuant to the 2019 Revised Guidance, we consider whether there
are additional elements set forth in the claims that integrate the judicial
exception into a practical application. See 2019 Revised Guidance, 84 Fed.
Reg. at 54–55.
MPEP § 2106.05(a)
Improvements to the Functioning of a Computer or
to Any Other Technology or Technical Field
Appellant argues the claimed invention provides an improvement to
computer functionality. In particular, Appellant contends the instant claims
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are similar to the subject claims considered by the CAFC in Finjan Inc. v.
Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018) (“Finjan”); Core
Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1363 (Fed.
Cir. 2018) (“Core Wireless”), and Enfish, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016). See Appeal Br. 13–16.
Appellant refers to prior USPTO guidance regarding § 101, including
the May 2016 Subject Matter Eligibility Update, 81 Fed. Reg. 27,381 (May
6, 2016). See Appeal Br. 10, 16. However, we note this prior guidance has
been superseded by the 2019 Revised Guidance, 84 Fed. Reg. at 52. Our de
novo review will apply the 2019 Revised Guidance.
Finjan
We are not persuaded by Appellant’s comparison of the claims on
appeal to the patent-eligible subject claim considered by the court in Finjan,
Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018). See
Appeal Br. 13–14. In Finjan, the court found the claimed behavior-based
virus scan constituted an improvement in computer functionality over the
“traditional, ‘code-matching’ virus scans.” Finjan, 879 F.3d at 1304. The
court determined that the Finjan claimed method employed a new kind of
file that allowed access to be tailored for different users, and allowed the
system to accumulate and use newly available, behavior-based information
regarding potential threats. Id. at 1305. The court ultimately held that the
Finjan claims were “directed to a non-abstract improvement in computer
functionality, rather than the abstract idea of computer security,” and
“recite[d] specific steps— generating a security profile that identifies
suspicious code and linking it to a downloadable— that accomplish the
desired result.” Id.
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Unlike the subject claims of Finjan, claim 1 fails to employ a newly
generated file containing a security profile in a downloadable, and does not
use a new file to enable a computer security system to improve on or add a
computer functionality by reciting specific steps accomplishing the desired
improved security results. Although we have considered Appellant’s
arguments, we are not persuaded that claim 1 on appeal is sufficiently
analogous to the subject claim(s) in Finjan.

Core Wireless
We find Appellant’s reliance on Core Wireless is also misplaced
because the claims presented here do not improve a user interface. See
Appeal Br. 14–15. The court’s holding in Core Wireless is much narrower
than asserted by Appellant, as the court analyzed specific limitations of the
claimed interface, such as: an application summary that can be reached
through a menu, the data being in a list and being selectable to launch an
application, and additional limitations directed to the actual user interface
displayed and how it functions. See Core Wireless at 1363. The court found
the subject claims were directed to an improved user interface and not the
abstract concept of an index as the claim “limitations disclose[d] a specific
manner of displaying a limited set of information to the user, rather than
using conventional user interface methods to display a generic index on a
computer.” Id.
We emphasize that Appellant’s representative claim 1 does not recite
a user interface, but rather is a “method for calculating computing resource
use charges for a data center consumer entity.” Further, Appellant has not
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shown, nor do we find, that the claims presented here recite any specific
manner of displaying the information, such as was the case in Core Wireless.
Accordingly, we do not find representative claim 1 is sufficiently analogous
to those claims held patent eligible in Core Wireless.
Enfish
We are also not persuaded by Appellant’s contention that the claims
provide an improvement over existing technology, as was the case in Enfish.
See Appeal Br. 15–16. Appellant specifically argues:
Appellant notes that the present claims are not rejected under
sections § 102 or § 103. This tends to support Appellant’s
assertion that the claims are directed to a “specific
implementation of a solution to a problem in the software arts,”
much like the claims in Enfish.
Id.
However, any analysis based upon anticipation or obviousness is not
relevant to our analysis for patent eligibility under 35 U.S.C. § 101. See
Return Mail, Inc. v. U.S. Postal Service, 868 F.3d 1350, 1370 (Fed.
Cir. 2017). Although the second step in the Alice/Mayo test is a search for
an “inventive concept,” the analysis is not directed to novelty or
nonobviousness, but rather searches for elements sufficient to ensure that the
claimed invention is directed to more than a patent ineligible concept, such
as an abstract idea. See Alice, 573 U.S. at 217–18. “Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013); see also Diamond v. Diehr, 450 U.S. 175, 188–89 (1981)
(“The ‘novelty’ of any element or steps in a process, or even of the process
itself, is of no relevance in determining whether the subject matter of a claim
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falls within the § 101 categories of possibly patentable subject matter.”);
Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 n.3
(Fed. Cir. 2016) (noting that an eligibility finding does not turn on the
novelty of using a user-downloadable application for the particular purpose
recited in the claims). Moreover, an improved abstract idea is still an
abstract idea. See Mayo, 566 U.S. at 90 (holding that a novel and
nonobvious claim directed to a purely abstract idea is, nonetheless patent-
ineligible).
Appellant additionally contends:
The present claims, when viewed in light of the
specification, are directed towards an improved technological
process for flexible billing of a virtualized infrastructure using
costs obtained from hardware computing resources. Even if
certain elements of the claims could at some level be considered
generic, such as being performed by generic computer
components, the subject matter of the claims “perform[s]
functions that are not merely generic.” See May 2016 Update at
4. For example, the claims achieve improvement through a
specific process that involves at least collecting usage from the
data center, mapping an organizational hierarchy to a data
center hierarchy that includes physical hosts and virtual
machines, and calculating a charge for using a virtual resource
of the data center based on usage of computing resources of a
physical host of the data center. Existing technologies do not
involve this improved technological process.
Appeal Br. 17 (emphasis added).
As set forth in MPEP § 2106.05(a):
To show that the involvement of a computer assists in
improving the technology, the claims must recite the details
regarding how a computer aids the method, the extent to which
the computer aids the method, or the significance of a computer
to the performance of the method. Merely adding generic
computer components to perform the method is not sufficient.
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Thus, the claim must include more than mere instructions to
perform the method on a generic component or machinery to
qualify as an improvement to an existing technology.
(Emphasis added).
Here, Appellant has not provided sufficient details regarding how the
claimed: “plurality of computing resources [which] include[] at least one of
a CPU, a disk, a Network Interface Card (NIC), and a memory,” the
“computer,” the “database,” the “computer server” and the “physical host”
include more than mere instructions to perform the recited steps to qualify as
an improvement to an existing technology. As discussed above, we
conclude Appellant’s generic computer implementation performs
mathematical operations that can be performed alternatively as mental
processes. See independent claim 1. See also Trading Techs. Int’l, Inc. v.
IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (The “‘mere automation of
manual processes using generic computers’ . . . ‘does not constitute a
patentable improvement in computer technology.’” Quoting Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017)).
Accordingly, on this record, we conclude independent claims 1, 11,
and 14 do not recite an improvement to the functionality of a computer or
other technology or technical field. See MPEP § 2106.05(a).
MPEP § 2106.05(b) and (c)
The Bilski Machine-or-Transformation Test (“MoT”)
We note the Supreme Court cautions that the MoT test is not the sole
test, but may provide a useful clue:
This Court’s precedents establish that the machine-or-
transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed
inventions are processes under § 101. The machine-or-
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transformation test is not the sole test for deciding whether an
invention is a patent-eligible “process.”
Bilski, 561 U.S. at 604 (emphasis added).
Here, Appellant advances no arguments that any of method claims
1–10 and 25–27 are tied to a particular machine, or transform an article to a
different state or thing. See MPEP § 2106.05(c).

MPEP § 2106.05(e) — Meaningful Claim Limitations14
The Examiner finds:
Further, no element or combination of elements in the
claims is sufficient to ensure that the claims amounts to
“significantly more” than the abstract idea itself, as directed by
Alice Corp. v. CLS Bank Int’l, by including: improvements to
another technology or another technical field; improvements to
the functioning of the computer itself, or; meaningful
limitations beyond generally linking the use of an abstract idea
to a particular technological environment.
Final Act. 6 (emphasis added).
However, Appellant does not advance substantive, persuasive
arguments as to any particular “meaningful” claim limitations, such as those
of the types addressed under MPEP § 2106.05(e), that impose meaningful
limits on the judicial exception.

14 See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 55, citing MPEP § 2106.05(e): “[A]pply[ing] or us[ing] the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.” (Emphasis added).
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As discussed above, we conclude the recited italicized method steps
shown in TABLE 1 could also be performed alternatively as a mental
process. See 2019 Revised Guidance, 84 Fed. Reg. at 52. As discussed
above, we see nothing in Appellant’s claims that specifically improves the
efficiency of the plurality of computing resources, the database, CPU, disk,
NIC, or memory, or another technology or technical field, as addressed
above under MPEP § 2106.05(a).
Accordingly, on this record, we conclude representative independent
claim 1 has no other argued meaningful limitations, as considered under
section 2106.05(e) of the MPEP, pursuant to the 2019 Revised Guidance.
MPEP § 2106.05(f)
Merely Including Instructions to Implement
an Abstract Idea on a Computer, or
Merely Using a Computer as a Tool
to Perform an Abstract Idea
We conclude Appellant’s claimed invention merely implements the
abstract idea using instructions executed on generic computer components,
as depicted in bold type in TABLE 1, and as supported in our reproduction
of the Specification, paragraphs 33 and 36, supra. Thus, we conclude
Appellant’s claims merely use a computer/processor as a tool to perform an
abstract idea.
MPEP § 2106.05(g)
Adding Insignificant Extra-Solution Activity
to the Judicial Exception
The Supreme Court guides that the “prohibition against patenting
abstract ideas ‘cannot be circumvented’ [by] adding ‘insignificant
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postsolution activity.’” Bilski, 561 U.S. at 610–11 (quoting Diehr, 450 U.S.
at 191–92).
As mapped in the right-hand column of TABLE 1, supra, we
conclude that representative independent claim 1 recites extra or post-
solution activities that courts have determined to be insufficient to transform
judicially excepted subject matter into a patent-eligible application. See
MPEP § 2106.05(g); 84 Fed. Reg. at 55 n.31. Data gathering, as performed
by the steps or functions in Appellant’s claims, is a classic example of
insignificant extra-solution activity. See, e.g., In re Bilski, 545 F.3d 943,
963 (Fed. Cir. 2008) (en banc), aff’d sub nom, Bilski v. Kappos, 561 U.S.
593 (2010).
We also determine step [i] “waiving a usage charge” limitation in
claim 1 recites insignificant post-solution activity. See Claim 1.
MPEP § 2106.05(h)
Generally Linking the use of the Judicial Exception to a Particular
Technological Environment or Field of Use
The Supreme Court guides: “the prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or [by] adding
‘insignificant postsolution activity.’” Bilski, 561 U.S. at 611–12, (quoting
Diehr, 450 U.S. at 191–92).
Appellant advances no lack of preemption argument in the Appeal
Brief. Nor do claims 1–17 and 25–27 on appeal present any other issues as
set forth in the 2019 Revised Guidance regarding a determination of whether
the additional generic elements integrate the judicial exception into a
practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 55.
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Thus, under Step 2A, Prong Two (MPEP § 2106.05(a)–(c) and (e)–
(h)), we conclude claims 1–17 and 25–27 do not integrate the judicial
exception into a practical application. Therefore, we proceed to Step 2B,
The Inventive Concept.
The Inventive Concept — Step 2B
Under the 2019 Revised Guidance, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
For Step 2B we must “look with more specificity at what the claim
elements add, in order to determine ‘whether they identify an “inventive
concept” in the application of the ineligible subject matter’ to which the
claim is directed.” Affinity Labs, 838 F.3d at 1258 (quoting Elec. Power
Grp., 830 F.3d at 1353).
We note Berkheimer v. HP Inc., (881 F.3d 1360 (Fed. Cir. 2018)) was
decided by the Federal Circuit on February 8, 2018. On April 19, 2018, the
PTO issued the Memorandum titled: “Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.)” (hereinafter “Berkheimer
Memorandum”). Because the Appeal Brief was filed on November 7, 2018
and the Reply Brief was filed on April 24, 2019, Appellant had constructive
notice of both the Berkheimer Federal Circuit decision and the USPTO
Berkheimer Memorandum.
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In reviewing the Briefs, we note Appellant advances no arguments
based upon the intervening change in the law effected by Berkheimer.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a generic “server,” “CPU,” “disk,” “NIC” (Network Interface
Card) and “memory” (claim 1) is simply not enough to transform the patent-
ineligible abstract idea here into a patent-eligible invention under Step 2B.
See Alice, 573 U.S. at 221 (“[C]laims, which merely require generic
computer implementation, fail to transform [an] abstract idea into a patent-
eligible invention.”).
Our reviewing court provides additional guidance: See FairWarning,
839 F.3d at 1096 (“[T]he use of generic computer elements like a
microprocessor or user interface do not alone transform an otherwise
abstract idea into patent-eligible subject matter.”); OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (claims reciting,
inter alia, sending messages over a network, gathering statistics, using a
computerized system to automatically determine an estimated outcome, and
presenting offers to potential customers found to merely recite “‘well-
understood, routine conventional activit[ies],’ either by requiring
conventional computer activities or routine data-gathering steps” (alteration
in original)).
This reasoning is applicable here. Therefore, on the record before us,
Appellant has not shown that the claims on appeal add a specific limitation
beyond the judicial exception that is not well-understood, routine, and
conventional, when the claim limitations are considered both individually
and as an ordered combination. See MPEP § 2106.05(d).
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In light of the foregoing, we conclude, under the 2019 Revised
Guidance, that each of Appellant’s claims 1–17 and 25–27, considered as a
whole, is directed to a patent-ineligible abstract idea that is not integrated
into a practical application, and does not include an inventive concept.
Accordingly, for the reasons discussed above, we sustain the
Examiner’s rejection under 35 U.S.C. § 101 of claims 1–17 and 25–27.
CONCLUSION
Under our 2019 Revised Guidance, as governed by relevant case law,
we conclude claims 1–17 and 25–27, rejected under 35 U.S.C. § 101, are
directed to patent-ineligible subject matter.
DECISION SUMMARY

FINALITY AND RESPONSE
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

Claims
Rejected
35 U.S.C.
§
Reference(s)Basis Affirmed Reversed
1–17, 25–27 101 Eligibility 1–7, 25–27