Ran Biron et al.

Patent Trials and Appeals Board

Dec 31, 2019

12726596 - (D) (P.T.A.B. Dec. 31, 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.
12/726,596 03/18/2010 Ran BIRON 82260107 1585
146568 7590 12/31/2019
MICRO FOCUS LLC
500 Westover Drive
#12603
Sanford, NC 27330
EXAMINER
MAMILLAPALLI, PAVAN
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
12/31/2019 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):
software.ip.mail@microfocus.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RAN BIRON, URI BEN-DOR,
and VADIM ARSHAVSKY1
____________

Appeal 2018-001951
Application 12/726,596
Technology Center 2100
____________

Before MICHAEL J. STRAUSS, AARON W. MOORE, and
PHILLIP A. BENNETT, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

1 Hewlett Packard Enterprise Development, LP is the real party in interest.
(See Appeal Br. 3.) “Appellant” is the “applicant” of 37 C.F.R. § 1.42(a).
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 5–11 and 21–36, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
The application is directed to “[s]ystems, methods, and other
embodiments associated with graph transformation,” one example of which
is “transforming a base graph into a folded graph as a function of a folding
query.” (Abstract.) Claim 5, reproduced below, exemplifies the subject
matter on appeal:
5. A non-transitory computer-readable medium storing
computer-executable instructions that when executed by a
computer cause the computer to perform a method, the method
comprising:
executing a base query on a stored graph to identify a base
graph, where the stored graph resides in a configuration
management database, where nodes in the stored graph represent
elements of an information technology (IT) infrastructure, and
where edges in the stored graph represent relationships between
the elements of the IT infrastructure;
generating a folding query based on a folding definition
that describes a desired hierarchy of an output graph;
transforming the base graph into a folded graph as a
function of the folding query, where the folding query describes
an edge to add to the folded graph when a pre-specified sub-
graph is detected in the base graph; and
providing the folded graph.

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THE REJECTION
Claims 5–11 and 21–36 stand rejected 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. 2.)
ANALYSIS
The Section 101 Framework
By statue, a patentable invention must be a “new and useful process,
machine, manufacture, or composition of matter, or [a] new and useful
improvement thereof.” 35 U.S.C. § 101. The Supreme Court has identified
implicit exceptions to patentability––laws of nature, natural phenomena, and
abstract ideas, and, in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217
(2014), and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66 (2012), provided a framework for identifying ineligible claims. The
“Mayo/Alice” evaluation has two steps: (1) determining if a claim is
directed to an ineligible concept, and, if so, (2) determining if one or more
claim elements is sufficient make the claim “significantly more” than the
ineligible concept itself. See Alice, 573 U.S. at 217–18.
The Patent Office has published Guidance for applying Mayo/Alice.
See USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50. The Guidance instructs us
first to look at whether a claim recites a judicial exception, the broad
categories of which are defined as mathematical concepts, certain methods
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of organizing human activity, and mental processes.2 See 84 Fed. Reg. at 54
(Step 2A, Prong One).
If we find a judicial exception, we determine whether it is “integrated
into a practical application” in the claim. See 84 Fed. Reg. at 54–55 (Step
2A, Prong Two); see also MPEP § 2106.05(a)–(c), (e)–(h) (non-exhaustively
listing ways in which a practical application may be found). “Practical
application” means that the claim includes “a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” 84 Fed. Reg. at 54. For example, a
practical application may exist in an improvement in the functioning of a
computer or other technology, a particular machine or manufacture integral
to the claim, or transformation or reduction of an article to a different state
or thing. See id. at 55. However, merely using a computer to perform an
abstract idea, adding insignificant extra-solution activity, or only generally
linking to a particular technological environment or field is not sufficient for
a practical application. See id.

2 “Mathematical concepts” includes “mathematical relationships,
mathematical formulas or equations, [and] mathematical calculations”;
“Certain methods of organizing human activity” includes “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)”; “Mental processes” includes “concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion).” 84 Fed. Reg. at 52.
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If a claim recites a judicial exception not integrated into a practical
application, it is directed to an abstract idea. In that case, we further look at
whether the claim “adds a specific limitation” beyond the judicial exception
that is not “well-understood, routine, conventional.” See 84 Fed. Reg. at 56
(Step 2B); see also MPEP § 2106.05(d). In the absence of such an addition,
a claim that has reached this stage of the analysis is ineligible.
Abstract Idea3
Claim 5 recites a computer-readable medium with instructions for
causing a computer to “execut[e] a base query on a stored graph to identify a
base graph,” “generat[e] a folding query based on a folding definition that
describes a desired hierarchy of an output graph”; “transform[] the base
graph into a folded graph as a function of the folding query, where the
folding query describes an edge to add to the folded graph when a pre-
specified sub-graph is detected in the base graph”; and “provid[e] the folded
graph.” The claim further recites that “the stored graph resides in a
configuration management database,” the nodes of the graph “represent
elements of an information technology (IT) infrastructure,” and the edges of
the graph “represent relationships between the elements of the IT
infrastructure.”
The Examiner found the claims “directed to the abstract idea of
manipulating a mathematical object (a graph) based upon a definition that
describes a desired result” and that the claims “do not include additional
elements that are sufficient to amount to significantly more than the judicial

3 Following the lead of the Examiner and Appellant, we address subject
matter eligibility in the context of claim 5. See 37 C.F.R. § 41.37(c)(1)(iv).
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exception because the additional computer elements, which are recited at a
high level of generality, provide conventional computer functions that do not
add meaningful limits to practicing the abstract idea.” (Final Act. 2.) The
Examiner further found that the claims do “not include additional elements
that are 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.” (Id. at 4.)
We agree with the Examiner that “executing a base query,”
“generating a folding query,” “transforming the base graph into a folded
graph as a function of the folding query, and “providing the folded graph”
constitute a technique for “manipulating a mathematical object”—the
graph—“through mathematical operations” and describe a “mathematical
algorithm.” (Final Act. 3.) We thus also agree with the Examiner that the
claims recite an abstract idea. See 84 Fed. Reg. at 52.
Appellant argues the claims are not abstract because “they are
necessarily rooted in (and inextricably tied to) computer technology in order
to overcome a problem specifically arising in the realm of configuration
management.” (Appeal Br. 10.) We are not persuaded. The claims are
directed an algorithmic technique for manipulating and displaying data
stored in a database. Although the claims do include computer components,
those recitations are entirely generic (“non-transitory computer-readable
medium storing computer-executable instructions that when executed by a
computer”) and, thus, not sufficient to make the claims non-abstract.4 See,

4 See Spec. ¶¶ 47–62 (describing generic computer hardware).
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e.g., Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874
F.3d 1329, 1337 (Fed. Cir. 2017) (“Claims directed to generalized steps to
be performed on a computer using conventional computer activity are not
patent eligible.”).
Appellant also argues that “the claimed invention may provide a
number of technical benefits in the field of configuration management of IT
infrastructure” in that (1) “[i]t may allow transformation of the graph into a
form that is more approachable,” (2) “[b]ecause the folded graph is
generated using a query, the query may be executable by the same query
engine that generated the base graph, therefore eliminating intermediary
servers, reducing the maintenance and server cost of searching a graph,” and
(3) “if the folding query is generated based on a data structure that resembles
the format that the user would like data presented in, the user can easily
construct the data structure using a graphical user interface without having to
learn complex rules.” (Appeal Br. 11.) This argument is not persuasive
because the alleged benefits are not tied to the claim language, and because
they are argued only to be benefits that “may” result from the invention.
Further, the first and third alleged advantages are matters of convenience
(“more approachable,” “easily”), and reciting the use of a computer for
reasons of convenience or speed does not make otherwise ineligible subject
matter eligible. See, e.g., LendingTree, LLC v. Zillow, Inc., 656 F. App’x
991, 997 (Fed. Cir. 2016) (holding ineligible claims to a computerized
method of speeding up a loan-application process); Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)
(“[M]erely adding computer functionality to increase the speed or efficiency
. . . does not confer patent eligibility on an otherwise abstract idea.”).
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Citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016), Appellant additionally argues that “the present claims are directed to
generating an improved data structure that improves the way a computer
stores, generates, and retrieves data structures in a configuration
management database, which as discussed earlier is a specific type of
database technology used to enhance operation of computer and IT
systems.” (Appeal Br. 12.) We do not agree that these claims are like those
in Enfish, which were eligible because they recited a “self-referential table”
that was “a specific type of data structure designed to improve the way a
computer stores and retrieves data in memory.” Enfish, 822 F.3d. at 1339.
Appellant’s process does not “improve the way a computer stores and
retrieves data in memory” or otherwise improve how the computer itself
operates; instead, it uses generic computer programming techniques5 to
implement a system for managing IT assets. Appellant does not claim a new
base graph, or a new way of storing a base graph, that might correspond to
Enfish’s “self-referential table.”
Appellant also cites McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299 (Fed. Cir. 2016), arguing that the instant claims “recite a
number of unconventional steps representing a specific way of enhancing
operation of a configuration database and a computer system involved in
configuration management.” (Appeal Br. 13.) The claimed method in
McRo “allow[ed] computers to produce ‘accurate and realistic lip
synchronization and facial expressions in animated characters’ that

5 See Spec. ¶ 46 (explaining only that “the graph transformation logic 630
may be implemented in hardware, instructions stored in a memory or in
execution, firmware, and/or combinations thereof”).
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previously could only be produced by human animators,” providing “an
improved technological result in conventional industry practice.” Id. at
1313, 1316. Appellant’s claims, however, describe a method for improving
a business process (IT management), not “an improved technological
result.”
To accept Appellant’s attempt to analogize the instant claims to the
Enfish and McRo claims would be to find that virtually any method
implemented on a computer is eligible, a position that cannot be squared
with either Alice itself or the subsequent Federal Circuit case law.
Because we agree with the Examiner that the claims recite an abstract
idea, we proceed to Prong Two of Step 2A to determine if the idea is
integrated into a practical application, in which case the claims as a whole
would not be directed to merely an abstract idea.
Practical Application
As noted, the “practical application” inquiry looks at whether a claim
includes “a meaningful limit on the judicial exception,” to ensure that “the
claim is more than a drafting effort designed to monopolize the judicial
exception.” 84 Fed. Reg. at 54. In this case, we have a computer-readable
medium with instructions for causing a computer to execute a query. The
claim thus recites a method that “merely uses a computer as a tool to
perform an abstract idea,” id. at 55, and, therefore, lacks integration into a
practical application. We do not find “an improvement in the functioning of
a computer or other technology,” because the generic processor is used for
its ordinary purpose. We do not find “a particular machine or manufacture
integral to the claim,” because a general purpose processor is not enough.
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And we do not find “transformation or reduction of an article to a different
state or thing,” because only intangible data is changed or manipulated.
Because we conclude that claim 5 lacks additional elements that
would allow us to find a practical application, we agree with the Examiner
that the claim is directed to an abstract idea and move to Step 2B.
Inventive Step
“It is possible that a claim that does not ‘integrate’ a recited judicial
exception is nonetheless patent eligible” as, “[f]or example the claim may
recite additional elements that render the claim patent eligible even though a
judicial exception is recited in a separate claim element.” 84 Fed. Reg. at
56. We need not reconsider the issues addressed in Step 2A, but do weigh
whether the claim “[a]dds 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.” Id. at 56.
Claim 5 is directed to an abstract idea of performing a query using a
processor. The claim recites a specific way of manipulating and retrieving
data that may have been new in the field. Collecting, modifying, filtering,
sorting data in general were well known, however, such that any innovation
in the claim is limited to using the particular kind of data and filtering and
sorting it in the particular way, which are part of the abstract idea. We thus
conclude that the claims do not include additional elements that evidence an
inventive concept imparting patent eligibility. Cf. Parker v. Flook, 437 U.S.
584, 585–86 (1978) (holding claims ineligible because “[t]he only difference
between the conventional methods . . . and that described in respondent’s
application rests in . . . the mathematical algorithm or formula”).
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Although Appellant argues “the Examiner has not properly considered
the ordered combination of elements of claim 5, as required by the Federal
Circuit’s guidance,” Appellant’s argument merely paraphrases the claim (see
Reply Br. 6), failing to explain why the claimed steps reflect a combination
that provides an inventive step. We find that, viewed as a whole, claim 5
simply describes the use of a generic computer to implement the abstract
idea in a particular environment, and, therefore, do not agree with Appellant
that “the subject matter of claim 5 is directed to improving the relevant
technology and computer functionality.” (Id. at 6–7.)
Appellant argues “the claims include meaningful limitations linking
the use of the abstract idea to the particular technological environment of
configuration management of IT infrastructure.” (Appeal Br. 14.) We do
not agree. The only limitations that link the use of the idea to “the particular
technological environment of configuration management of IT
infrastructure” are the recitations regarding the content of the database,
which are insufficient to change the abstract character of the claims. See
Diamond v. Diehr, 450 U.S. 175, 193 (1981) (“A mathematical formula does
not suddenly become patentable subject matter simply by having the
applicant acquiesce to limiting the reach of the patent for the formula to a
particular technological use.”); cf. Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (“[L]imiting the claims to the
particular technological environment of power-grid monitoring is, without
more, insufficient to transform them into patent-eligible applications of the
abstract idea at their core.”); Dealertrack, Inc. v. Huber, 674 F.3d 1315,
1334 (Fed. Cir. 2012) (“The notion of using a clearinghouse generally and
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using a clearinghouse specifically to apply for car loans . . . is of no
consequence without more.”).
Appellant also argues that the claims “do not have a preemptive
effect.” (Appeal Br. 14.) This is unpersuasive because although preemption
“may signal patent 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).
Appellant additionally argues “a claim that improves the functioning
of a computer is considered to transform the claim process into a patent-
eligible application” and list the alleged “technical benefits in the field of
configuration management of IT infrastructure” identified above. (Appeal
Br. 14–15.) This is not persuasive because, again, the claimed subject
matter does not “improve the functioning of a computer.” Instead, it allows
a generic computer to be used in a way that may improve the management
of IT infrastructure. As noted, however, the use a computer for speed or
convenience does not give rise to patent eligibility. See, e.g., Intellectual
Ventures I, 792 F.3d at 1370; LendingTree, 656 F. App’x at 997.
In the Reply, Appellant argues that claim 5 is like the claim approved
as eligible in Bascom Global Internet Services, Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016). (See Reply Br. 12–13.) We do not see the
similarity. In Bascom, the inventive concept was “the installation of a
filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user.” Id. at 1350.
Appellant’s claims do not include structural or architectural limitations
analogous to those that made the Bascom claims patent eligible.
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Finally, Appellant argues that “the claims improve a technological
field and [are] inextricably tied to computer technology.” (Appeal Br. 15.)
As we found above in connection with step 1, however, the claims recite a
method implemented on a generic computer and, thus, do not reflect a
technological improvement.
Eligibility Conclusion
The claims recite an abstract idea, have not been shown to be
integrated into a practical application, and do not include additional
recitations that make them significantly more than the underlying abstract
idea. The Examiner’s rejection of claims 5–11 and 21–36 under 35 U.S.C.
§ 101 is, therefore, sustained.
DECISION
The rejection of claims 5–11 and 21–36 under 35 U.S.C. § 101 is
affirmed.
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).

DECISION SUMMARY
Claims Rejected 35 U.S.C. § Basis Affirmed Reversed
5–11, 21–36 101 5–11, 21–36
Overall Outcome 5–11, 21–36

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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). See 37 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED