Mary Helander et al.

Patent Trials and Appeals Board

Jul 28, 2020

11354192 - (D) (P.T.A.B. Jul. 28, 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.
11/354,192 02/15/2006 Mary Elizabeth Helander YOR920050556US1 8549
7590 07/28/2020
McGinn Intellectual Property Law Group, PLLC
Suite 200
8321 Old Courthouse Road
Vienna, VA 22182-3817
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
07/28/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARY ELIZABETH HELANDER,
KAAN KUDSI KATIRCIOGLU,
GIUSEPPE ANDREA PALEOLOGO, and
BONNIE KATHRYN RAY
____________

Appeal 2019-006362
Application 11/354,192
Technology Center 3600
____________

Before ROBERT E. NAPPI, NORMAN H. BEAMER, and
SCOTT E. BAIN, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–3, 6, 8, 21–23, and 27. Claims 4, 5, 7, 9–20, 28,
and 29 are cancelled. We have jurisdiction over the pending rejected claims
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies International Business Machines
Corporation as the real party in interest. (Appeal Br. 1.)
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THE INVENTION
Appellant’s disclosed and claimed invention is directed to planning
for development of services solution offerings, including generating action
plans for portions of the development lifecycles of the services solution
offerings. (Spec., Abstract.)
Independent claim 6, reproduced below, is illustrative of the subject
matter on appeal:
6. A computer-implemented method of planning for
development of at least one services solution offering, the
method, comprising:
generating by a programed computer an incremental
action plan for a development lifecycle of the services solution
offering, the development lifecycle including a plurality of
portions, said generating comprising, in a processing unit of a
computer:
determining a value of said services solution offering as a
function of time within the development lifecycle;
populating a mathematical decision-making model based
on said determined value; and
determining, for each of the plurality of portions of the
development lifecycle, whether and when to postpone the
portion, accelerate the portion, or decelerate the portion based
on the mathematical decision-making model,
wherein said incremental action plan is generated in
consideration of revenue, profit, and sales, and
wherein said mathematical decision-making model is
based on a random variable in a time period, a cost of the
services solution offering, a budget, an investment in the
services solution offering in the time period, and when the
services solution offering is completed in the time period,
wherein results of said determining, for said each of the
plurality of portions of the development lifecycle, are applied in
a supply chain of a manufacturing facility to optimize a
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movement of a component of a product in the manufacturing
facility such that, based on said mathematical decision making
model, at least one element of the development lifecycle of the
services solution offering is intentionally delayed until
information about decision making criteria becomes available.
(Appeal Br. 15–16 (Claims App.).)

REJECTIONS
The Examiner rejected claims 1–3, 6, 8, 21–23, and 27 under 35
U.S.C. § 112, first and second paragraphs, as failing to comply with the
written description requirement, and as indefinite. (Final Act. 6–7.)
The Examiner rejected claims 1–3, 6, 8, 21–23, and 27 under 35
U.S.C. § 101 because the claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more. (Final Act. 8–12.)
ISSUES ON APPEAL
Appellant’s arguments in the Appeal and Reply Briefs present the
following issues:2
Issue One: Whether the Examiner erred in finding the claims fail to
comply with the written description requirement, and are indefinite.
(6/14/2018 Response After Final Rejection, 7.)

2 Rather than reiterate the arguments of Appellant and the positions of the
Examiner, we refer to the Response After Final Rejection (filed June 14,
2018); the Appeal Brief (filed Sept. 12, 2018); the Reply Brief (filed Aug.
28, 2019); the Final Office Action (mailed Apr. 16, 2018); the Advisory
Action (mailed July 3, 2018); and the Examiner’s 2nd Answer (mailed Aug.
14, 2019) for the respective details.
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Issue Two: Whether the Examiner erred in finding the claims are
directed to a judicial exception without significantly more. (Appeal Br. 7–
12.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv).
First Issue
In response to the Examiner’s Section 112 rejections, Appellant filed
amended claims addressing those rejections. (6/14/2018 Response After Fi-
nal Rejection, 2–6). In an Advisory Action, the Examiner entered those
amendments, and did not maintain the rejections. (7/3/2018 Advisory
Action.) However, in the Answer, although the Examiner noted “the After
Final Amendments filed 14 June 2018 and the After Final claim amend-
ments entered by the Advisory Action filed 3 July 2018,” the Examiner also
restated the original Section 112 rejections and stated “that Appellant has not
traversed in Appellant's Brief [those] rejections.” (Ans. 2–3.)
These latter statements in the Answer appear to be an inadvertent
error on the Examiner’s part. For example, the Final Action rejected claims
28 and 29 under Section 112, but those claims were cancelled by the
amendments after final. (Final Act. 6–7; 6/14/2018 Response After Final
Rejection, 2.) Also, the rejections directed to independent claims 1 and 6
relied on language deleted from the amended versions of those claims.
(Final Act. 6–7; 6/14/2018 Response After Final Rejection, 3–4.) Therefore,
we do not sustain the Examiner’s Section 112 rejections.
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Second Issue
The Examiner concludes the claims are directed to an abstract idea:
“managing risk within the process of developing a services solution
offering.” (Final Act. 8.) The Examiner also cites our previous Decision
holding “[t]his concept of planning for developing a services solution
offering (i.e., a ‘package’) by generating an action plan is similar to other
‘fundamental economic concepts’ found to be abstract ideas.” (Id. (citing Ex
parte Helander, et al., Appeal 2016-004522 (PTAB June 1, 2017), 6.)
The Examiner further concludes the claims “do not include
improvements to another technology or technical field; nor do they include
improvements to the functioning of the computer itself,” and thus the
claimed subject matter is not integrated into a practical application. (Final
Act. 10.) Likewise, the Examiner concludes that the claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception. (Id. at 12.)
Appellant argues that the additional limitation added to the
independent claims after our prior Decision is “such that the independent
claims dearly define a practical use of the claimed invention, ‘significantly
more’ than an abstract idea.” (Appeal Br. 7.) That additional limitation is:
wherein results of said determining, for said each of the
plurality of portions of the development lifecycle, are applied in
a supply chain of a manufacturing facility to optimize a
movement of a component of a product in the manufacturing
facility such that, based on said mathematical decision making
model, at least one element of the development lifecycle of the
services solution offering is intentionally delayed until
information about decision making criteria becomes available.
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(Appeal Br. 16 (Claims App.).) Appellant compares this limitation to that of
Diamond v. Diehr, 450 U.S. 175, 191 (1981), which recited an abstract idea
in the form of a well-known mathematical equation, but included the
additional steps of feeding temperature measurements into a computer and
then using the computer to repeatedly apply the formula to calculate the
remaining cure time inside a rubber mold — which the court held was
sufficient to transform the patent ineligible formula into a patent eligible
application of the formula. (Appeal Br. 8.)
Appellant also argues there are other ways than the claimed invention
to conduct the alleged abstract idea of the claimed invention, and therefore,
“there is no preemption of the claimed subject matter as idea in the abstract.”
(Appeal Br. 9.) Appellant further cites BASCOM Global Internet Services,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016); DDR Holdings
v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014); Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016); McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016); Research Corp. Techs. v.
Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010); and Trading Technologies
Int’l. Inc. v. CQG, 675 Fed. Appx. 1001 (Fed. Cir. 2017), as examples of
claimed subject matter held to improve existing technology and thus to be
patent eligible. (Appeal Br. 9–12; Reply Br. 8–14.)
We are not persuaded the Examiner erred. An invention is patent-
eligible if it claims a “new and useful process, machine, manufacture, or
composition of matter.” 35 U.S.C. § 101. Here, independent claims 1 and 6
and their dependent claims relate to a method — i.e., a process. However,
the Supreme Court has long held that “[l]aws of nature, natural phenomena,
and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573
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U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 589–90 (2013)). The “abstract ideas” category
embodies the longstanding rule that an idea, by itself, is not patentable.
Alice, 573 U.S. at 216–17.
In Alice, the Supreme Court sets forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 217. The first step in the analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts,”
such as an abstract idea. Id. Concepts determined to be abstract ideas, and
thus patent ineligible, include certain methods of organizing human activity
such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski v.
Kappos, 561 U.S. 593, 611 (2010); mathematical concepts (Parker v. Flook,
437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson,
409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include
physical and chemical processes, such as “molding rubber products”
(Diamond, 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))).
If the claims are directed to a patent-ineligible concept, the second
step in the Alice/Mayo analysis is to consider the elements of the claims
“individually and ‘as an ordered combination’” to determine whether there
are additional elements that “‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
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In other words, the second step is to “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, 573 U.S. at 217–18 (quoting Mayo, 566
U.S. at 72–73.) 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. Alice, 573 U.S. at 221. A transformation into
a patent-eligible application requires more than simply stating the abstract
idea while adding the words “apply it.” Id.
Further to the Alice/Mayo analytical framework, and as acknowledged
by Appellant, in January 2019, the U.S. Patent and Trademark Office
(USPTO) published revised guidance on the application of § 101. 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter
of internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and

3 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 (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
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(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
2019 Revised 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, under
Step 2B, 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
In evaluating the claims at issue, we consider claims 1 and 6 as
representative, consistent with how Appellant and the Examiner analyze the
claims. See 37 C.F.R. § 41.37(c)(1)(iv)(2016). Omitting the generic
references to “computer-implemented,” “programmed computer,” and
“processing unit of a computer” (which are discussed separately below), and
the reference to “a supply chain of a manufacturing facility to optimize a
movement of a component of a product in the manufacturing facility” (also

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance — Section III(A)(2), 84
Fed. Reg. 54–55.
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discussed separately below), the remaining limitations of claims 1 and 6
recite either steps that can be performed by the human mind (or by using a
pencil and paper), and/or a mathematical formula:
A . . . method of planning for development of at least one
services solution offering, the method, comprising:
generating . . . an incremental action plan for a
development lifecycle of the services solution offering, the
development lifecycle including a plurality of portions, said
generating comprising . . . . :
determining a value of said services solution offering as a
function of time within the development lifecycle;
populating a mathematical decision-making model based
on said determined value,
[for claim 1:] said mathematical decision making model
comprising [a mathematical formula]; and
determining, for each of the plurality of portions of the
development lifecycle, whether and when to postpone the
portion, accelerate the portion, or decelerate the portion based
on the mathematical decision-making model,
[for claim 6:] wherein said incremental action plan is
generated in consideration of revenue, profit, and sales, and
[for claim 6:] wherein said mathematical decision-
making model is based on a random variable in a time period, a
cost of the services solution offering, a budget, an investment in
the services solution offering in the time period, and when the
services solution offering is completed in the time period,
wherein results of said determining, for said each of the
plurality of portions of the development lifecycle, are applied
. . . such that, based on said mathematical decision making
model, at least one element of the development lifecycle of the
services solution offering is intentionally delayed until
information about decision making criteria becomes available.
(Appeal Br. 15–16 (Claims App.).)
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In addition to the fact that each of these steps can be performed by the
human mind and/or recite a mathematical formula, together they constitute
steps taken in the course of the human activity of planning for development
of a services solution offering. As stated in the Revised Guidance, “methods
of organizing human activity” considered an abstract idea include
“fundamental economic principles or practices . . . ; commercial or legal
interactions (including . . . marketing or sales activities or behaviors;
business relations); managing personal behavior or relationships or
interactions between people (including . . . following rules or instructions).”
(Revised Guidance, 84 Fed. Reg. at 52). The above listed claim limitations
relate to the fundamental economic practice of planning for development of
a services solution offering, involving business relationships and marketing
and sales activities in the form of “determining . . . value of . . . services
solution[s]”; “consideration of revenue, profit, and sales”; accounting for
costs, budgets, and investments; and applying formulae and following a
procedure. See, e.g., “[t]he present invention generally relates to a system
and method for managing risk within the process of developing a services
solution offering.” (Spec. ¶ 1.)
Thus, the claims recite all three of the types of abstract ideas provided
in the Revised Guidance: mathematical concepts, certain methods of
organizing human activity, and mental processes.
Further pursuant to the Revised Guidance, we consider whether there
are additional elements set forth in claims 1 and 6 that integrate the judicial
exception into a practical application. Revised Guidance, 84 Fed. Reg. at
54–55. Here, the abstract idea of the claims is carried out using a
programmed processing unit of a computer. We agree with the Examiner
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that “[t]he claims merely amount to the application of instructions to apply
the abstract idea on a general purpose computer, and require nothing more
than a generic computer (processor) to carry out the abstract idea itself.”
(Final Act. 10.) “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Alice,
573 U.S. at 221.
As indicated above, Appellant also relies on the last element of claims
1 and 6, which applies the claimed method to “a supply chain of a
manufacturing facility to optimize a movement of a component of a product
in the manufacturing facility,” and which further requires “based on said
mathematical decision making model, at least one element of the
development lifecycle of the services solution offering is intentionally
delayed until information about decision making criteria becomes available.”
We agree with the Examiner:
[The requirement] merely claims what is common and well-
known in science and engineering . . . to look before you leap!
In other words, any application of any decision support system
is useful only to the extent that necessary information on which
to act has been acquired. This limitation merely claims this old,
well-known concept and the Board should not accord any
significance to it. It merely states in more complex terms what
is commonplace in any decision process — wait to act until you
obtain the necessary information on which to act.
(Ans. 5.) In addition, the Specification confirms that “postponement in a
supply chain . . . of a product manufacturing process or product distribution
process,” is “conventional.” (Spec. ¶¶ 3–9.) Thus, the additional
requirement added to the claims on which Appellant relies does nothing
more than apply the abstract idea to a particular environment, and add
insignificant post-solution activity to the other claimed steps. It is well
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established that 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).

Moreover, unlike the authorities relied on by Appellant, the subject
matter of the claims offers no improvement to technology that would
constitute an integration into a practical application. Nor does the subject
matter of the claims contain additional elements that implement the judicial
exception with a “particular machine,” because the claims do not specify any
details in regard to the system. See MPEP § 2106.05(b). Further, the
method does not transform matter; at best it transforms information. See
MPEP § 2106.05(c).
Nor does claim 1 or claim 6 have any other meaningful limitations
(MPEP § 2106.05(e)), or any of the other considerations set forth in the
Revised Guidance regarding a determination of whether additional elements
integrate the judicial exception into a practical application. See Revised
Guidance, 84 Fed. Reg. at 55.
In addition, we are not persuaded by Appellant’s arguments regarding
the absence of complete preemption. “While preemption may signal patent
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ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015).
Accordingly, we conclude that the subject matter of claims 1 and 6
(and the remaining claims) is directed to mathematical concepts, certain
methods of organizing human activity, and mental processes, and thus an
abstract idea, and the additional elements recited therein do not integrate the
abstract idea into a practical application.
Turning to the second step of the Alice inquiry, we consider the
elements of the claims “individually and ‘as an ordered combination’” to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217
(quoting Mayo, 566 U.S. at 66, 79, 78 (2012)). Again, the Examiner finds,
and we agree:
[T]he claims are not “significantly more” than the abstract ideas
themselves because the claims do not recite an improvement to
another technology or technical field, an improvement to the
functioning of the computer itself, or meaningful limitations
beyond generally linking the use of the abstract ideas to a
particular technological environment as noted above.
(Final Act. 12.) “[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.”
Alice, 573 U.S. at 223. These additional elements of the claims, whether
individually or in combination, fails to add “significantly more” to the basic
abstract idea encompassed by the claim sufficient to transform the claimed
abstract idea into a patent-eligible application.
“It is clear from Mayo that the ‘inventive concept’ cannot be the
abstract idea itself.” Aatrix Software, Inc. v. Green Shades Software, Inc.,
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890 F.3d 1354, 1359 (Fed. Cir. 2018). Moreover, “[p]atent law does not
protect claims to an ‘asserted advance in the realm of abstract ideas . . . no
matter how groundbreaking the advance.’” 890 F.3d at 1359 (Fed. Cir.
2018). Nothing regarding any aspect of the “ordered combination” of the
claim elements provide significantly more than the abstract idea that claims
1 and 6 are directed to.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claims 1 and 6. Appellant provides no arguments that would differentiate
the remaining claims from those claims. (Appeal Br. 13.) Thus, the
foregoing analysis of is exemplary of that for dependent claims 2, 3, 8, 21–
23, and 27–29. See 37 C.F.R. § 41.37(c)(1)(iv) (2016). Therefore, we also
sustain the Examiner’s 35 U.S.C. § 101 rejection of those claims.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6, 8,
21–23, 27
112, ¶¶ 1, 2 written description,
indefiniteness
1–3, 6, 8,
21–23,
27
1–3, 6, 8,
21–23, 27
101 non-statutory subject
matter
1–3, 6, 8,
21–23, 27

Overall
Outcome
1–3, 6, 8,
21–23, 27

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TIME PERIOD FOR 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).

AFFIRMED