Matthew A. Neerincx et al.

Patent Trials and Appeals Board

Oct 28, 2019

13471670 - (D) (P.T.A.B. Oct. 28, 2019)

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.
13/471,670 05/15/2012 Matthew A. Neerincx 335146.01 7009
69316 7590 10/28/2019
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
GURMU, MULUEMEBET
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
10/28/2019 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):
chriochs@microsoft.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW A. NEERINCX, LUIZ F. SANTOS, OLEG IGNAT,
DAVID B. LOMET, QUETZALCOATL BRADLEY, RAGHU RAM,
PETER GVOZDJAK, and BALENDRAN MUGUNDAN
Appeal 2018-006237
Application 13/471,670
Technology Center 2100
Before JOHN A. JEFFERY, SCOTT B. HOWARD, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. See Final Act. 1. 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. Appellant identifies the real party in interest as Microsoft
Technology Licensing, LLC. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to facilitating idempotent execution of
commands generated by a client for execution by a database server. Spec.
¶ 18. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method performed by a database server executing on at
least one of one or more machines, the method comprising:
receiving one or more commands generated by a client
and a command identifier associated with each of the one or
more received commands, each command identifier being
different and being associated with only one command of the
one or more received commands;
determining whether the command identifier associated
with each of the one or more received commands has already
been stored in a repository;
attempting to execute each of the one or more received
commands in response to at least a determination that the
command identifier associated therewith has not already been
stored in the repository; and
storing the command identifier associated with each of the
one or more received commands in the repository along with an
indication of whether the received command was executed
successfully.
REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-patentable subject matter. Ans. 2–15.
Claims 1, 4, 7–13, 16, and 18–20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Narasinghanallur et al. (US
2010/0318570 A1; published Dec. 16, 2010) (“Narasinghanallur”),
Bellemore et al. (US 6,088,728; issued July 11, 2000) (“Bellemore”), and
Rajput (US 2007/0124187 A1; May 31, 2007). Final Act. 2–12.
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Claims 2, 3, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Narasinghanallur, Bellemore, Rajput,
and Sedukhin et al. (U.S. 2009/0113457 A1; published Apr. 30, 2009).
Final Act. 12–16.
Claims 5, 6, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Narasinghanallur, Bellemore, Rajput,
and Jiang et al. (US 6,453,354 B1; issued Sept. 17, 2002) (“Jiang”). Final
Act. 16–19.
ANALYSIS
Rejection of Claims 1–20 Under 35 U.S.C. § 101
Legal Standard
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n,
601 F.3d 1319, 1331 (Fed. Cir. 2010).
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 217 (2014). In addition, the Office recently published revised
guidance for evaluating subject matter eligibility under 35 U.S.C. § 101,
specifically with respect to applying the Alice framework. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Office Guidance”). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
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art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016). Per Office Guidance, this first inquiry has two
prongs of analysis (i) does the claim recite a judicial exception (e.g., an
abstract idea), and (ii) if so, is the judicial exception integrated into a
practical application. 84 Fed. Reg. at 54. Under the Office Guidance, if the
judicial exception is integrated into a practical application, see infra, the
claim is patent eligible under § 101. 84 Fed. Reg. at 54–55. If the claim is
directed to a judicial exception (i.e., recites a judicial exception and does not
integrate the exception into a practical application), the next step is to
determine whether any element, or combination of elements, amounts to
significantly more than the judicial exception. Alice, 573 U.S. at 217;
84 Fed. Reg. at 56. 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).
To summarize, under the current Office 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);2 and

2 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
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(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)).3
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 are 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.4
See Office Guidance.
Step 1
Claim 1, as a method claim, recites one of the enumerated categories of
eligible subject matter in 35 U.S.C. § 101 (process). Therefore, the issue
before us is whether it is directed to a judicial exception without significantly
more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that the claimed invention is directed to
“the abstract idea of collecting information about a user, indexing that
information, and then indexing it in another index when it exceeds a
threshold.” Ans. 2.
We agree with the Examiner’s conclusion that the “determining” step
of claim 1 is abstract. See Ans. 4. Determining information can be

3 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
4 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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performed in the human mind, and the recited “determining” step can be
practically performed by a human, either mentally or with the use of pen and
paper.
Thus, under Step 2A(i), we agree with the Examiner that claim 1
recites a judicial exception. Specifically, we conclude claim 1, as a whole,
recites a mental process and, thus, an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If claim 1 recites a patent-ineligible concept, as we conclude above,
we proceed to the “practical application” Step 2A(ii) in which we determine
whether the recited judicial exception is integrated into a practical
application of that exception 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.
The Examiner concluded that claim 1 does not include additional
elements sufficient to amount to significantly more than the judicial
exception because the additional elements, when considered both
individually and as an ordered combination, do not amount to significantly
more than the abstract idea. Ans. 4. We agree.
Here the additional elements recited in claim 1 are the “receiving,”
“attempting,” and “storing” steps, as well as the recited “database server
executing on at least one or more machines” and the “repository.”
We note the “receiving” step of claim 1 merely gathers information.
Courts have found such data gathering steps to be 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)
(characterizing data gathering steps as insignificant extra-solution activity).
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Similarly, we conclude the “storing” step of claim 1 is merely
insignificant post-solution activity. The Supreme Court guides that 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 610–11 (quoting Diehr, 450 U.S. at 191–92).
The “attempting” step requires “attempting to execute each of the one
or more received commands in response to at least a determination that the
command identifier associated therewith has not already been stored in the
repository.” This constitutes insignificant post-solution activity because the
“attempting” limitation requires no particular tool and imposes no
meaningful limits on the claim such that it is not nominally or tangentially
related to the invention. Thus, the “attempting” step does not help to
integrate the recited abstract ideas into a practical application. See MPEP
§ 2106.05(g); see also Bilski, 561 U.S. at 610–11.
We agree with the Examiner that the recited “database server
executing on at least one of one or more machines” and “repository” amount
to “no more than implementing the abstract idea with a computerized
system.” See Ans. 4.
Appellant argues that the Examiner erred in determining that claim 1
is directed to an abstract idea because the claim is “directed to a novel and
non-obvious manner of ensuring that a database server executes received
commands no more than once.” Reply Br. 8.
Appellant’s argument is not persuasive. Nowhere does claim 1 recite
ensuring that a database server executes received commands no more than
once. Moreover, it is not enough for subject-matter eligibility that claimed
techniques be novel and nonobvious in light of prior art, passing muster
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under 35 U.S.C. §§ 102 and 103. See Mayo, 566 U.S. at 89–90; Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A]
claim for a new abstract idea is still an abstract idea. The search for a § 101
inventive concept is thus distinct from demonstrating § 102 novelty.”);
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed.
Cir. 2016) (same for obviousness).
Appellant further argues that claim 1 recites an improvement in
computer functionality—specifically, an improvement in databases—and,
thus, is not directed to an abstract idea. Reply Br. 12 (citing Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1330 (Fed. Cir. 2016)). In particular,
Appellant argues that claim 1 improves the functionality of a database server
by ensuring that database commands are executed only a single time, and
“data corruption due to unintended executions of the same database
commands more than once may be avoided.” Id.
We disagree. Again, the purported improvements are not claimed.
Nowhere does claim 1 recite ensuring that database commands are executed
only a single time, preventing execution of the same database command
more than once, or avoiding data corruption. Moreover, in Enfish, the court
held claims directed to a self-referential logical model for a computer
database patent-eligible under step one of Alice. The disclosed technique
enabled faster searching and more effective storage of data than previous
methods. Id. at 1333. The court found the claims directed to “a specific
improvement to the way computers operate, embodied in [a] self-referential
table” (id. at 1336), and explained that the claims are “not simply directed to
any form of storing tabular data, but instead are specifically directed to a
self-referential table for a computer database” that functions differently than
conventional databases. Id. at 1337.
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Claim 1, however, is not related to the type of patent-eligible database
claim considered by the court in Enfish. Appellant’s Specification defines a
“database server” generically as “a software product that provides database
services to software applications in response to requests received
therefrom.” Spec. ¶ 1. Similarly, the Specification generally describes the
recited “repository” generically as “a storage device or system that can be
accessed in some manner by or on behalf of database server 104.” Spec.
¶ 29.
Indeed, claim 1 does not constitute an improvement to computer
technology. Relying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible. See Alice,
573 U.S. at 224 (“use of a computer to create electronic records, track
multiple transactions, and issue simultaneous instructions” is not an
inventive concept); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (a computer “employed only
for its most basic function . . . does not impose meaningful limits on the
scope of those claims”); MPEP § 2106.05(f)(2) (“Use of a computer or other
machinery in its ordinary capacity for economic or other tasks (e.g., to
receive, store, or transmit data) or simply adding a general purpose computer
or computer components after the fact to an abstract idea (e.g., a
fundamental economic practice or mathematical equation) does not provide
significantly more.”). Therefore, claim 1 does not recite an improvement or
meaningful limitation that is analogous to a “self-referential table for a
computer database” of the type considered in Enfish. See 822 F.3d at 1336;
see also MPEP §§ 2106.05(a) (“Improvements to the Functioning of a
Computer or to Any Other Technology or Technical Field”), 2106.05(e)
(“Other Meaningful Limitations”).
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In sum, we conclude the abstract idea is not integrated into a practical
application and, thus, the claim is directed to the judicial exception.
Step 2B — “Inventive Concept” or “Significantly More”
Turning to step 2B of the Official Guidance, we look to whether
claim 1 (a) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, 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. Official Guidance, 84 Fed. Reg. at 56.
The Examiner determined that the claimed additional elements
amount to “nothing more than the instruction to implement the abstract idea
(i.e. determining command identifier) in a particular, albeit well-understood,
routine and conventional technological environment.” Ans. 5.
Appellant argues that, under the USPTO’s April 19, 2018 Memo
regarding Berkheimer v. HP, Inc., 881 F .3d 1360 (Fed. Cir. 2018)
(“Berkheimer Memo”), “an additional element (or combination of elements)
is not well-understood, routine or conventional unless the examiner finds,
and expressly supports a rejection in writing.” Reply Br. 3.
We are not persuaded by Appellant’s argument that the Examiner
erred. As discussed above, the additional elements in claim 1 amount to no
more than mere instructions to apply the abstract idea using generic
computer components, which is insufficient to provide an inventive concept.
Specifically, the Specification describes the computer elements as generic
computer elements, including a “database server” that “is a software product
that provides database services to software applications in response to
requests received therefrom.” Spec. ¶ 1. The Specification further describes
that “[s]uch database services may include but are not limited to storing,
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retrieving, analyzing or manipulating database data.” Id. The Specification
also describes that the recited “repository” comprises a storage device or
system that can be accessed in some manner by or on behalf of database
server 104. Spec. ¶ 29. Accordingly, we agree with the Examiner that the
additional claim limitations are well-understood, routine, and conventional
elements.
Appellant does not direct our attention to anything in the Specification
that indicates the computer components perform anything other than well-
understood, routine, and conventional functions, such as receiving data,
looking up data in a database, attempting to execute commands, and storing
data in a database. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355
(Fed. Cir. 2014) (“That a computer receives and sends the information over
a network—with no further specification—is not even arguably inventive”);
In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016)
(server that receives data, extracts classification information from the
received data, and stores the digital images insufficient to add an inventive
concept); Alice, 573 U.S. at 225-26 (receiving, storing, sending information
over networks insufficient to add an inventive concept).
As evidence of the conventional nature of the “database server” and
“repository” recited in claim 1, we again refer to paragraphs 1 and 29 of the
Specification. The generic computer components described in the
Specification are well-understood, routine, and conventional, at least
because the Specification describes the computer components in a manner
that indicates that the additional elements are sufficiently well-known that
the Specification does not need to describe the particulars of such additional
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elements to satisfy 35 U.S.C. § 112(a). See Berkheimer Memo5 § III.A.1;
Spec. ¶¶ 1, 29.
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellant’s
Specification, as cited above. We conclude claim 1 does not have an
inventive concept because the claim, in essence, merely recites various
computer-based elements along with no more than mere instructions to
implement the identified abstract idea using the computer-based elements.
Because the claims fail under both the Step 2A and Step 2B analyses,
we sustain the Examiner's § 101 rejection of independent claim 1 and
grouped claims 2–20, not argued separately with particularity.

Rejection of Claims 1–20 Under 35 U.S.C. § 103(a)
Appellant contends that the Examiner erred in rejecting claim 1 for
obviousness because Rajput fails to teach or suggest the limitation “each
command identifier being different and being associated with only one
command of the one or more received commands,” as recited in claim 1.
Appeal Br. 9. Appellant argues that the execution command or data
identifier in Rajput is used to identify a type of a task, such as a call

5 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018) (explaining that a specification that describes
additional elements “in a manner that indicates that the additional elements
are sufficiently well-known that the specification does not need to describe
the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
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command, which is “very different from the claimed embodiment.” Id. at
10. Appellant further argues “[t]here is no disclosure in Rajput that the
execution command or data identifier are different for each command and
associated with only one command, as claimed.” Id.
We are not persuaded that the Examiner erred. The Examiner found:
In paragraph [0019], Rajput teaches, the execution commands
are one or more data identifiers used to indicate a particular task.
Rajput further teaches see Rajput paragraph [0036], the system
identifiers 132 indicating which processing system is to execute
a particular command. Additionally Rajput teaches see Rajput
paragraph [0037], receiving an indicator that the first execution
command has been executed ... receiving the first data set
generated in the first processing device ... providing a second
execution command to a second processing device in a second
processing environment, different from the first processing
environment, (i.e. each processing device has a different
command identifier).
Ans. 15–16.
Appellant has not persuasively rebutted the Examiner’s findings.
Nowhere does Appellant address the specific paragraphs of Rajput relied on
by the Examiner. Rather, in the Reply Brief, Appellant again argues that
“[i]n Rajput, the ‘execution command’ or data identifier is used to identify a
type of a task, such as a call command, which is very different from the
claimed embodiment that requires receiving, by a database server, both a
command and a command identifier, ‘each command identifier being
different and being associated with only one command of the one or more
received commands.’” Reply Br. 16. Appellant, however, has not
persuasively explained how the recited “command” in claim 1 differs from
the “call command” taught in Rajput.
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Appellant’s argument is also conclusory, merely reciting the claim
limitation, the teachings of Rajput, and stating that the two are not the same.
Id. Appellant’s arguments, therefore, do not persuasively rebut the
Examiner’s findings.
Moreover, the test for obviousness is not whether the claimed
invention is expressly suggested in any one or all of the references, but
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant
has not addressed the teachings of Narasinghanallur, Bellemore, and Rajput,
relied on by the Examiner in combination. Nor has Appellant persuaded us
that the disputed limitation would not have been obvious to those of ordinary
skill in the art in light of the combined teachings of those references.
Accordingly, we are not persuaded that the Examiner erred in finding
that Narasinghanallur, Bellemore, and Rajput teach or suggest the disputed
“each command identifier” limitation.
For the same reasons, Appellant contends that the cited prior art
references do not teach or suggest the limitation “attempting to execute each
of the one or more received commands in response to at least a
determination that the command identifier associated therewith has not
already been stored in the repository,” as recited in claim 1. Appeal Br. 14.
Appellant argues that, because the cited prior art does not teach or suggest
the “each command identifier” limitation, discussed above, the cited prior art
does not teach or suggest the “attempting” limitation. Id. at 15.
For the reasons discussed above, we are not persuaded that the
Examiner erred in finding that Narasinghanallur, Bellemore, and Rajput
teach or suggest the disputed “attempting” limitation.
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Accordingly, we sustain the Examiner’s § 103(a) rejection of
representative claim 1, as well as grouped claims 2–20, not argued
separately with particularity. See Appeal Br. 20–21.
CONCLUSION
The Examiner’s decision rejecting claims 1–20 is affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1, 4, 7–13,
16, 18–20
103(a) Narasinghanallur,
Bellemore, Rajput
1, 4, 7–13,
16, 18–20

2, 3, 14, 15 103(a) Narasinghanallur,
Bellemore, Rajput,
Sedukhin
2, 3, 14, 15
5, 6, 17 Narasinghanallur,
Bellemore, Rajput,
Jiang
5, 6, 17
Overall Outcome: 1–20

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED