Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Jun 2, 2020

2019006797 (P.T.A.B. Jun. 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.
14/699,387 04/29/2015 Kim Herzig 355967.01 1075
69316 7590 06/02/2020
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
CHOY, PAN G
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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):
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 KIM HERZIG, JACEK CZERWONKA, BRENDAN MURPHY,
MICHAELA GREILER
____________

Appeal 2019-006797
Application 14/699,387
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–13, which constitute all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our Decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed March 29, 2019) and Reply Brief (“Reply Br.,” filed Sept. 18, 2019),
and the Examiner’s Answer (“Ans.,” mailed July 18, 2019) and Final Office
Action (“Final Act.,” mailed Oct. 29, 2018). Appellant identifies the real
party in interest as “Microsoft Technology Licensing LLC.” Appeal Br. 3.
Appeal 2019-006797
Application 14/699,387

2
CLAIMED INVENTION
Appellant’s disclosure is directed to “performing a test optimization
that is based on predicted test cost and test benefit of future test executions
based on historical patterns.” Spec. ¶ 2.
Claim 1 is the sole independent claim on appeal. Claim 1, reproduced
below with added bracketed notations and emphasis, is representative of the
claimed subject matter. See Appeal Br., Claims App.
1. A method of automatically selecting tests for execution on a
software product, the method comprising:
[(a)] executing, with at least one processor, a plurality of
tests on the software product;
[(b)] generating, with the at least one processor, a cost
model based on test performance history data that is
based on results of the executions of the plurality of tests
on the software product, wherein the cost model
provides, for each test in the plurality of tests, a first
expected monetary cost value associated with executing
the test and a second expected monetary cost value
associated with skipping execution of the test;
[(c)] automatically selecting, with the at least one
processor, tests in the plurality of tests for future
execution based on the first and second expected
monetary cost values; and
[(d)] executing, with the at least one processor, the
selected tests on the software product.
Appeal 2019-006797
Application 14/699,387

3
REJECTION2
Claims 1–13 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.

OPINION
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “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.” Id. (quoting Mayo,

2 “The 35 U.S.C. § 103 (a) rejection as set forth in the Final Office Action is
withdrawn in view of the Appeal Conference decision.” Ans. 3.
Appeal 2019-006797
Application 14/699,387

4
566 U.S. at 78, 79). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101 and under the
first step of the Alice framework, the Examiner determined that the claims
are directed to a method for “performing a test optimization that is based on
predicted test cost and test benefit of future test executions based on
historical patterns.” Final Act. 7. According to the Examiner, this is
“related to a fundamental economic practice.” Id.; see also Ans. 6.
Appellant argues claims 1–13 together as a group. See Appeal Br. 5–
7. We select independent claim 1 as representative for the group. Thus,
pursuant to 37 C.F.R § 41.37(c)(1)(iv), dependent claims 2–13 stand or fall
with claim 1.
The U.S. Patent and Trademark Office (the “USPTO”) has published
revised guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50.
We have reviewed the eligibility of the pending claims under the Alice
framework and the through the lens of the 2019 Revised Guidance, but we
Appeal 2019-006797
Application 14/699,387

5
are not persuaded the Examiner erred in concluding that the pending claims
are directed to a judicial exception without significantly more.
Step One of the Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Alice framework is to determine whether the
claims at issue are “directed to” a patent-ineligible concept, e.g., an abstract
idea. Alice Corp., 573 U.S. at 217. This first step, as set forth in the 2019
Revised Guidance (i.e., Step 2A), is a two-prong test; in Step 2A, Prong 1,
we look to whether the claim recites a judicial exception, e.g., one of the
following three groupings of abstract ideas: (1) mathematical concepts; (2)
certain methods of organizing human activity, e.g., fundamental economic
principles or practices, commercial or legal interactions; and (3) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next
consider whether the claim includes additional elements, beyond the judicial
exception, that “integrate the [judicial] exception into a practical
application,” i.e., that apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the judicial
exception (“Step 2A, Prong 2”). Id. at 54–55. Only if the claim (1) recites a
judicial exception and (2) does not integrate that exception into a practical
application do we conclude that the claim is “directed to” the judicial
exception, e.g., an abstract idea.
The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
Appeal 2019-006797
Application 14/699,387

6
1343, 1346 (Fed. Cir. 2015)). In computer-implemented inventions, we ask
whether the focus of the claims is on a specific improvement in relevant
technology or on a process that itself qualifies as an “abstract idea” for
which computers are invoked merely as a tool. See id. at 1335–36. Here, it
is clear from the Specification (including the claim language) that the focus
of the claim is on an abstract idea, and not on any improvement to
technology.
The Specification is entitled “SELECTING TESTS FOR
EXECUTION ON A SOFTWARE PRODUCT,” and states that some
embodiments are directed “to performing a test optimization that is based on
predicted test cost and test benefit of future test executions based on
historical patterns.” Spec. ¶ 2. The Abstract of the Specification describes
the invention as:
A method of automatically selecting tests for execution on
a software product includes generating a cost model based on test
performance history data that is based on results of past
executions of a plurality of tests on the software product, wherein
the cost model provides, for each test in the plurality of tests, a
first expected monetary cost value associated with executing the
test and a second expected monetary cost value associated with
skipping execution of the test. The method includes
automatically selecting tests in the plurality of tests for future
execution based on the first and second expected monetary cost
values.
The claimed invention is intended to optimize the testing of software
products based on a comparison of the cost of executing a test with the cost
of skipping the execution of the test. Spec. ¶ 2. To that end, claim 1 recites
a method of selecting tests for execution on a software product, comprising
four steps: (a) executing a plurality of tests on the software product; (b)
generating a cost model based on test performance history data that is based
Appeal 2019-006797
Application 14/699,387

7
on results of the executions of the plurality of tests on the software product,
wherein the cost model provides, for each test in the plurality of tests, a first
expected monetary cost value associated with executing the test and a
second expected monetary cost value associated with skipping execution of
the test; (c) selecting tests in the plurality of tests for future execution based
on the first and second expected monetary cost values; and (d) executing the
selected tests on the software product. See claim 1 supra. Each of these
steps is performed by “at least one processor.” See id.
Under the broadest reasonable interpretation, step (b) describes a
mental process and a mathematical concept. For example “generating a cost
model based on test performance history that is based on results of
executions of the plurality of tests on the software product” as recited in step
(b) involves a mathematical calculation because it is estimating the expected
costs as it considers past executions to assess the expected cost values. See
¶¶ 57–61 (outlines formulas for cost functions C exec and C skip). As such,
under the Guidance, step (b) falls under the mathematical concepts grouping,
which includes mathematical calculations, and thus, recites an abstract idea.
See 2019 Revised Guidance, 84 Fed. Reg. at 52. Such mathematical
calculations have been determined to be an abstract idea. See, e.g., In re
Grams, 888 F.2d 835, 837 (Fed. Cir. 1989) (“Mathematical algorithms join
the list of non-patentable subject matter not within the scope of section
101.”); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir.
2018) (holding that claims to a “series of mathematical calculations” are
directed to an abstract idea); Diamond v. Diehr, 450 U.S. at 191 (“[a]
mathematical formula . . . is not accorded the protection of our patent laws,
and this principle cannot be circumvented by attempting to limit the use of
Appeal 2019-006797
Application 14/699,387

8
the formula to a particular technological environment”) (citation omitted).
Moreover, such calculations can also be performed in the human mind or
with the aid of a pen and paper.
Under the broadest reasonable interpretation step (c) also describes a
mental process because selection of a future test execution based on a
comparison of the predicted test cost and test benefit can practically be
performed in the human mind. See Spec. ¶ 18 (“Manual test selection (e.g.,
one based on the experience of engineers) is possible and often employed”).
Such mental process has been determined to be an abstract idea. See 2019
Revised Guidance 84 Fed. Reg. at 52 (“Mental processes—concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion.”)
Having concluded that claim 1 recites a judicial exception, i.e. an
abstract idea (Step 2A, Prong 1), we next consider whether the claim recites
additional elements that integrate the judicial exception into a practical
application (Step 2A, Prong 2). 2019 Revised Guidance, 84 Fed. Reg. at 51.
When a claim recites a judicial exception and fails to integrate the
exception into a practical application, the claim is “directed to” the judicial
exception. Id. Claim 1 may integrate the judicial exception when, for
example, it reflects an improvement to technology or a technical field. Id. at
55.
The additional elements recited in claim 1 supra are italicized. These
additional elements are “at least one processor” and the term
“automatically,” which are disclosed in the Specification at a high degree of
generality, i.e., generic computer components in a generic computing
environment (see Spec. ¶¶ 24–26). For example, the Specification indicates
Appeal 2019-006797
Application 14/699,387

9
that such components include computer storage media (e.g., non-transitory
computer-readable storage media storing computer-executable instructions
that when executed by at least one processor cause the at least one processor
to perform a method). Spec. ¶ 25.
The recitation of executing a plurality of tests on the software product
in step (a) adds insignificant extra-solution activity to the judicial exception
in the form of data-gathering because it is based on data gathered from past
test executions. See Spec. ¶ 116 (“a cost model is generated based on test
performance history data that is based on results of past executions of a
plurality of tests on a software product”). Further, the recitation of
executing the selected tests on the software product in step (d) is also
insignificant extra-solution activity (i.e., post-solution activity) because it is
incidental to the primary focus of claim 1, which is to select tests for
execution on a software product. See MPEP § 2106.05 (g). (“An example
of post-solution activity is an element that is not integrated into the claim as
a whole, e.g., a printer that is used to output a report of fraudulent
transactions, which is recited in a claim to a computer programmed to
analyze and manipulate information about credit card transactions in order to
detect whether the transactions were fraudulent.”).
As discussed above, steps (a) and (d) do not recite additional elements
that integrate the abstract idea into a practical application because they add
insignificant extra-solution activity to the judicial exception. The additional
elements “at least one processor” and the term “automatically” are elements
that do no more than generally link the use of a judicial exception to a
particular technological environment or field of use. See 2019 Revised
Guidance, 84 Fed. Reg. at 55. The focus of the invention is not on an
Appeal 2019-006797
Application 14/699,387

10
improvement in computers as tools, but an abstract idea that uses computers
as tools to perform the claimed method.
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in computer technology and/or functionality to the claimed
invention or that otherwise indicates that the claimed invention integrates the
abstract idea into a “practical application,” as that phrase is used in the
2019 Revised Guidance.3
We conclude, for the reasons outlined above, that claim 1 recites an
abstract idea, and the additional elements recited in the claim are no more
than generic components used as tools to perform the recited abstract idea.
As such, they do not integrate the abstract idea into a practical application.
See Alice Corp., 573 U.S. at 223-24 (“[W]holly generic computer
implementation is not generally the sort of ‘additional featur[e]’ that
provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’”) (alterations in
original) (quoting Mayo, 566 U.S. at 77). Accordingly, we agree with the
Examiner that claim 1 is directed to an abstract idea.

3 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
Appeal 2019-006797
Application 14/699,387

11
Step Two of the Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Alice framework that claim 1
is directed to an abstract idea, we next consider under Step 2B of the 2019
Revised Guidance, the second step of the Alice framework, whether claim 1
includes additional elements or a combination of elements that provides an
“inventive concept,” i.e., whether the additional elements amount to
“significantly more” than the judicial exception itself. 2019 Revised
Guidance, 84 Fed. Reg. at 56.
The relevant inquiry is whether the claim includes additional
elements, i.e., elements other than the abstract idea itself, that “‘transform
the nature of the claim’ into a patent-eligible application.” Alice Corp.,
573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78).
As discussed above, besides the extra-solution activity recited in steps
(a) and (d), the only additional elements recited beyond the abstract idea are
“at least one processor” and the term “automatically.” These elements do
not amount to an inventive concept because they are generic computer
components used to perform generic computer functions — a determination
fully consistent with the Specification, as such, the use of such components
in the manner recited is well understood, routine, or conventional. See Spec.
¶¶ 24–26. Considering the steps individually and in combination, claim 1
lacks additional elements to ensure that the claim amounts to significantly
more than the abstract idea. Specifically, the recited steps, understood in
light of the Specification, do not appear to require anything other than
conventional computers and components.
Appellant contends the references cited by Examiner discuss a cost
model but do not teach or suggest a cost model that provides two monetary
Appeal 2019-006797
Application 14/699,387

12
costs for each test or a selection of test for future execution based on the
monetary cost values. See Appeal Br. 6–7, Reply Br. 3.
However, we see no relation between novelty and obviousness and
101 eligibility. Contrary to Appellant’s contention, neither a finding of
novelty nor a non-obviousness determination automatically leads to the
conclusion that the claimed subject matter is patent eligible. Although the
second step in the Alice framework is termed a search for an “inventive
concept,” the analysis is not an evaluation of novelty or non-obviousness,
but rather, a search for “an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.’” Alice Corp., 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). A novel and non-obvious
claim directed to a purely abstract idea is, nonetheless, patent ineligible. See
Mayo, 566 U.S. at 90; 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 falls within the § 101 categories of possibly patentable subject
matter.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Accordingly, we
sustain the rejection of independent claim 1 under 35 U.S.C. § 101,
including dependent claims 2–13, which fall with claim 1.
Appeal 2019-006797
Application 14/699,387

13
CONCLUSION
The rejection of claims 1–13 under 35 U.S.C. § 101 is AFFIRMED.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–13 101 Eligibility 1–13
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