Robin Dillard et al.

Patent Trials and Appeals Board

Jul 29, 2020

2020000255 (P.T.A.B. Jul. 29, 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.
11/304,943 12/16/2005 Robin A. Robison Dillard AUS920050319US1 6526
11445 7590 07/29/2020
IBM Corporation - Endicott Drafting Center
1701 North Street
Building 256-3
Endicott, NY 13760
EXAMINER
MINCARELLI, JAN P
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
07/29/2020 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):
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parteROBIN A. ROBISON DILLARD,
PRIMELYNN CYNTHIA REYES, SHERWIN KENDRICK MEEKER,
STEVE OHARA JOHNSON, JAMES RICHARD STEVENSON, and
BEVERLY OTEMA YIRENKYI
Appeal 2020-000255
Application 11/304,943
Technology Center 3600
Before LARRY J. HUME, BETH Z. SHAW, and MATTHEW J. McNEILL,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1, 10–12, 21–23, 32, and 33, which are
all claims pending in the application. Appellant has canceled claims 2–9,
13–20, 24–31, and 34–40. See Appeal Br. 1. 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. Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Br. 1.
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STATEMENT OF THE CASE2
The claims are directed to a system and method for outcomes-based
delivery of services. See Spec. (Title). In particular, Appellant’s disclosed
embodiments and claimed invention “relate[] to assessing motivations and
corresponding relationships of participants in an ecosystem — a value
network — within which strategies are collaboratively developed,
relationships and innovation are fostered, and capabilities are designed and
coordinated to achieve a specific shared outcome and/or corresponding
change in focus, operations, and, especially governance.” Spec. ¶ 1 (“Field
of the Invention”).
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
Appeal (emphasis added to contested prior-art limitations):
1. A method for estimating and displaying a
competency of a network of a plurality of human participants in
developing a public value, the method comprising the steps of:
generating, by a processor, a computer-displayed
illustration of a computer model of a hierarchical network of
contributors organized to achieve an outcome,
the computer-displayed illustration having a first style of
icons represent capabilities required to achieve the outcome,
having a second style of icons representing contributors in the
network, and having graphical lines depicted between the
second style of icons representing relationships between

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Sept. 4, 2014); Reply Brief (“Reply Br.,” filed Dec. 12, 2014); Examiner’s
Answer (“Ans.,” mailed Sept. 25, 2014); Final Office Action (“Final Act.,”
mailed June 3, 2014); and the original Specification (“Spec.,” filed
Dec. 16, 2005).
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contributors which are organized to perform each capability in
the network according to the computer model, and
wherein the second style of icons are graphically
arranged around the first style of icon;
prompting a user, by a processor, to select a level of
maturity to one or more of the relationships between the
contributors according to the computer model, the level of
maturity ranging from a minimum value representative of new
or immature relationship to a maximum value representative of
a mature relationship;
receiving, by a processor, via input from the user, the
levels of maturity and associating by a processor the received
levels of maturity to at least one respective relationship;
calculating, by a processor, at least one composite score
for at least one of the capabilities by averaging the levels of
maturity of the respective relationships; and
annotating, by a processor, the computer-displayed
illustration by adding an indicator of the at least one composite
score to the illustration, whereas the user may visualize the
hierarchical network, the participants, the capabilities, and the
relationships.
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Hawks US 2003/0216942 A1 Nov. 20, 2003
Sengir et al. (“Sengir”) US 2005/0080655 A1 Apr. 14, 2005
Little US 2005/0197873 A1 Sept. 8, 2005

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REJECTIONS
R1. Claims 1, 10–12, 21–23, 32, and 33 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 abstract idea)
without significantly more. Ans. 2.
R2. Claims 1, 10–12, 21–23, 32, and 33 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Little,
Hawks, and Sengir. Final Act. 2.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 10–19; Reply Br. 1–7)
and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of
patent-ineligible subject matter Rejection R1 of claims 1, 10–12, 21–23, 32,
and 33 on the basis of representative claim 1; and we decide the appeal of
obviousness Rejection R1 of claims 1, 10–12, 21–23, 32, and 33 on the basis
of representative claim 1.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claims 1, 10–
12, 21–23, 32, and 33 and, unless otherwise noted, we incorporate by
reference herein and adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken, and (2) the
reasons and rebuttals set forth in the Examiner’s Answer in response to
Appellant’s arguments. We highlight and address specific findings and
arguments regarding claim 1 for emphasis as follows.
1. § 101 Rejection R1 of Claims 1, 10–12, 21–23, 32, and 33
Issue 1
Appellant argues (Reply Br. 1–7) the Examiner’s rejection of claim 1
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter is
in error. These contentions present us with the following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?
Principles of Law
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.4

4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (alteration in original) (citing Diamond v.
Diehr, 450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853)));
and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
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Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
Examples of claims that do not recite mental processes because they
cannot be practically performed in the human mind include: (a) a claim to a
method for calculating an absolute position of a GPS receiver and an
absolute time of reception of satellite signals, where the claimed GPS
receiver calculated pseudoranges that estimated the distance from the GPS
receiver to a plurality of satellites, SiRF Technology, Inc. v. International
Trade Commission, 601 F.3d 1319, 1331–33 (Fed. Cir. 2010); (b) a claim to
detecting suspicious activity by using network monitors and analyzing
network packets, SRI International, Inc. v. Cisco Systems, Inc., 930 F.3d
1295, 1304 (Fed. Cir. 2019); (c) a claim to a specific data encryption method
for computer communication involving a several-step manipulation of data,
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed.
Cir. 2016) (distinguishing TQP Development, LLC v. Intuit Inc., 2014 WL
651935 (E.D. Tex. Feb. 19, 2014)) (the specific data encryption method
“could not conceivably be performed in the human mind or with pencil and
paper”). While a claim limitation to a process that “can be performed in the
human mind, or by a human using a pen and paper” qualifies as a mental
process, a claim limitation that “could not, as a practical matter, be
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performed entirely in a human’s mind” (even if aided with pen and paper)
would not qualify as a mental process.5
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view
respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is
now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘“inventive
concept”’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that

5 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 1375-
76 (Fed. Cir. 2011) (distinguishing Research Corp. Techs. v. Microsoft
Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int'l Trade
Comm’n, 601 F.3d 1319 (Fed. Cir. 2010)).
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the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
B. USPTO Revised Guidance
The PTO published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf). 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 (October 2019 Update: Subject Matter Eligibility)
(hereinafter “October 2019 Update”).
Under the Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes);6 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).7
See Revised Guidance 52–53.

6 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
7 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.8
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).

8 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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Revised Guidance 52 (footnotes omitted).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.9
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.

9 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
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The seven identified “practical application” sections of the MPEP,10
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional

10 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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elements that render the claim patent eligible even though one or more claim
elements may recite a judicial exception.11 The Federal Circuit has held
claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B)
because the additional elements recited in the claims provided “significantly
more” than the recited judicial exception (e.g., because the additional
elements were unconventional in combination).12 Therefore, if a claim has
been determined to be directed to a judicial exception under Revised Step
2A, we must also evaluate the additional elements individually and in
combination under Step 2B to determine whether they provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the exception itself).13
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified

11 See, e.g., Diehr, 450 U.S. at 187.
12 See, e.g., Amdocs, Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300,
1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings v.
Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
13 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
Section III.B.14
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine, or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .

14 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
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See Berkheimer Memo 3–4.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
Analysis
Step 1 – Statutory Category
Claim 1, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. 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 claim 1 is “directed toward assessing
motivations and relationships of participants in a value network ecosystem
(see specification paragraph 1) in order to generate a sociogram (see, e.g.,
Brief page 11), which is considered to fall within the judicial exception of an
abstract idea because it assesses methods of organizing human activities to
achieve public outcomes.” Ans. 3.
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We conclude claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 1 recites an abstract idea based upon the Revised Guidance.
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses that
the invention “relates to assessing motivations and corresponding
relationships of participants in an ecosystem — a value network — within
which strategies are collaboratively developed, relationships and innovation
are fostered, and capabilities are designed and coordinated to achieve a
specific shared outcome and/or corresponding change in focus, operations,
and, especially governance.” Spec. ¶ 1.
Appellant’s Abstract describes the invention as:
A systems-assisted method for defining and managing a
public value network according to one or more desired
outcomes of the public value network, which includes creating
a public value network representation by defining participants
in the network, relationships between the participants, and a
desired outcome the network, assigning a maturity level value
to each relationship; establishing a network governance
framework; specifying the capabilities of said public value
network; calculating a capabilities maturity index according to
the defined relationships, relationship maturity levels, and
capabilities; and creating visualizations displayed to a user
representing the network, the relationships, and the maturity
levels.
Spec. 57 (Abstract).
With respect to this step of the analysis, Appellant argues:
[P]lease note that the interpretation of the claims as a “method
for organizing human activities” is inaccurate in and of itself.
The system (a computer running a method or process) does not
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directly organize humans and their activities. Instead, the
system prompts a user for certain input, receives that input,
makes certain analyses, and then produces a graphical output
which is useful for the user (or another person) to then organize
human activities. It would be then the user, not the system, who
organizes and manages the human activities. The claimed
invention is a technological tool for such a manager to use.
Reply Br. 3. We are not persuaded by Appellant’s argument that the
underlying recited actions are not abstract by virtue of them being carried
out by a computer, for the reasons discussed below.
In TABLE I below, we identify in italics the specific claim limitations
in claim 1 that we conclude recite an abstract idea. We additionally identify
in bold the additional (non-abstract) claim limitations that are generic
computer components and techniques, and underline limitations representing
extra or post-solution activity (bracketed labeling added for ease of
identification):
TABLE I
Independent Claim 1 Revised Guidance
A method for estimating and
displaying a competency of a network
of a plurality of human participants in
developing a public value, the method
comprising the steps of:
A process (method) is a statutory
subject matter class. See 35 U.S.C.
§ 101. See 35 U.S.C. § 101
(“Whoever invents or discovers
any new and useful process,
machine, manufacture, or
composition of matter, or any new
and useful improvement thereof,
may obtain a patent therefor,
subject to the conditions and
requirements of this title.”).
[L1a] generating, by a processor,

A processor is a generic computer
component.
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Independent Claim 1 Revised Guidance
[L1b] a computer-displayed
illustration of a computer model of a
hierarchical network of contributors
organized to achieve an outcome,
Data gathering and display
elements are merely insignificant
extra-solution activity that do not
add significantly more to the
abstract idea to render the claimed
invention patent-eligible. See In re
Bilski, 545 F.3d 943, 962 (Fed.
Cir. 2008) (en banc), aff’d on
other grounds, 561 U.S. 593
(2010) (“[T]he involvement of the
machine or transformation in the
claimed process must not merely
be insignificant extra-solution
activity”); see also MPEP
§ 2106.05(g); and see buySAFE,
Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014)
(computer receives and sends
information over a network).
[L2a] the computer-displayed
illustration having a first style of
icons represent capabilities required
to achieve the outcome,
[L2b] having a second style of
icons representing contributors in
the network, and
[L2c] having graphical lines
depicted between the second style
of icons representing relationships
between contributors which are
organized to perform each capability
in the network according to the
computer model, and
[L2d] wherein the second style of
icons are graphically arranged
around the first style of icon;
The use of different first and
second icon types and graphical
lines on a display represents
generic computer display
techniques and functionality.
Alternatively, these display
elements are merely insignificant
extra-solution activity that do not
add significantly more to the
abstract idea to render the claimed
invention patent-eligible. See
Bilski, 545 F.3d at 962.
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Independent Claim 1 Revised Guidance
[L3a] prompting a user, by a
processor,
[L3b] to select a level of maturity to
one or more of the relationships
between the contributors according
to the computer model, the level of
maturity ranging from a minimum
value representative of new or
immature relationship to a
maximum value representative of a
mature relationship;
Prompting a user represents
generic computer functionality
“[S]elect[ing] a level of maturity
. . . according to the computer
model” is an abstract idea, i.e., an
observation, evaluation,
judgment, opinion” which could
be performed as a mental
process. See Revised Guidance
52.
[L4] receiving, by a processor, via
input from the user, the levels of
maturity and
Receiving information, i.e., data
gathering via input from the user,
such as levels of maturity, is
merely insignificant extra-
solution activity that does not
add significantly more to the
abstract idea to render the
claimed invention patent-eligible.
Revised Guidance 55, n.31; see
In re Bilski, 545 F.3d 943, 962
(Fed. Cir. 2008) (en banc), aff’d
on other grounds, 561 U.S. 593
(2010) (“[T]he involvement of
the machine or transformation in
the claimed process must not
merely be insignificant extra-
solution activity”).
[L5] associating by a processor the
received levels of maturity to at least
one respective relationship;
“[A]ssociating . . . the received
levels of maturity to at least one
respective relationship” is an
abstract idea, i.e., an observation,
evaluation, judgment, opinion”
which could be performed as a
mental process. See Revised
Guidance 52.
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Independent Claim 1 Revised Guidance
[L6] calculating, by a processor, at
least one composite score for at least
one of the capabilities by averaging
the levels of maturity of the
respective relationships; and
A mathematical calculation such
as calculating a composite score
is an abstract idea. Revised
Guidance 52 and n.12 citing SAP
America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir.
2018) (holding that claims to a
‘‘series of mathematical
calculations based on selected
information’’ are directed to
abstract ideas).
[L7] annotating, by a processor, the
computer-displayed illustration by
adding an indicator of the at least
one composite score to the
illustration,
whereas the user may visualize the
hierarchical network, the
participants, the capabilities, and the
relationships.
Transmitting information for
display and then annotating the
information on the display is
insignificant extra-solution
activity. See Revised Guidance
55, n.31.
Spec. 20 (Claims App.).
Under the broadest reasonable interpretation standard,15 we conclude
limitations [L1] through [L7] recite steps and functions that would ordinarily

15 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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occur when “estimating and displaying a competency of a network of a
plurality of human participants in developing a public value,” as in claim 1.
See Final Act. 3–4. For example, prompting and receiving user input related
to “select[ing] a level of maturity to one or more of the relationships
between the contributors,” “associating . . . the received levels of maturity to
at least one respective relationship,” and “calculating . . . at least one
composite score for at least one of the capabilities by averaging the levels of
maturity of the respective relationships” are operations that generally would
occur when estimating competency of a network of a plurality of human
participants in developing a public value. Further, other than the recited
computer-related aspects, we determine that steps [L3b] (“select[ing] a level
of maturity”), [L5] (“associating . . . the received levels of maturity to at
least one respective relationship”), and [L6] (“calculating . . . at least one
composite score for at least one of the capabilities by averaging the levels of
maturity of the respective relationships”) recite abstract ideas, whether
initiated person-to-person, on paper, or using a computer.
Moreover, we determine that claim 1, overall, recites certain methods
of organizing human activity. In particular, we additionally determine that
claim 1, overall, recites a certain method of organizing human activity in the
form of managing personal behavior or relationships or interactions between
people that may also be performed by pen and paper. This type of activity,
i.e., estimating and displaying a competency of a network of a plurality of
human participants in developing a public value, as recited overall by
limitations [L1] through [L7], for example, and aside from any computer-
related aspects, includes longstanding conduct that existed well before the
advent of computers and the Internet, and could be carried out by a human
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with pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.”).16
Thus, under Step 2A(i), we agree with the Examiner that claim 1’s
method for estimating and displaying a competency of a network of a
plurality of human participants in developing a public value recites a judicial
exception and, under our Revised Guidance, we conclude claim 1 recites a
judicial exception of a certain method of organizing human activity, i.e.,
managing personal behavior or relationships or interactions between people,
and thus recites an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a judicial exception, 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

16 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
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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.
As to the specific limitations, we find limitation [L4] (“receiving . . .
via input from the user, the levels of maturity”) recites insignificant data
gathering. See MPEP § 2106.05(g). Data gathering, as performed by the
step or function in Appellant’s claims, is a classic example of insignificant
extra-solution activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed.
Cir. 2008) (en banc), aff’d sub nom, Bilski v. Kappos, 561 U.S. 593 (2010).
We also find limitations [L1b] (“a computer-displayed illustration of a
computer model”) and [L7] (“annotating . . . the computer-displayed
illustration by adding an indicator of the at least one composite score to the
illustration”) recite insignificant extra or post-solution activity. The
Supreme Court guides that the “prohibition against patenting abstract ideas
‘cannot be circumvented by’ . . . adding ‘insignificant postsolution
activity.’” Bilski, 561 U.S. at 610–11 (quoting Diehr, 450 U.S. at 191–92).
We further find limitations [L1a] (“generating, by a processor”), [L2a]
(“the computer-displayed illustration having a first style of icons represent
capabilities required to achieve the outcome”), [L2b] (“having a second style
of icons representing contributors in the network”), and [L2c] (“having
graphical lines depicted between the second style of icons representing
relationships between contributors which are organized to perform each
capability in the network according to the computer model”), [L2d]
(“wherein the second style of icons are graphically arranged around the first
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style of icon”), and [L3a] (“prompting a user”) represent generic computer
and display components and functionality.
On this record, we are of the view that Appellant’s claims do not
operate the recited generic computer components and functions in an
unconventional manner to achieve an improvement in computer
functionality. See MPEP § 2106.05(a).
We find each of the limitations of claim 1 recite abstract ideas, data
gathering, extra or post-solution activity, or generic computer components or
functionality as identified in Step 2A(i), supra, and none of the limitations
integrate the judicial exception of estimating and displaying a competency of
a network of a plurality of human participants in developing a public value
into a practical application as determined under one or more of the MPEP
sections cited above. The claim as a whole merely uses instructions to
implement the abstract idea on a computer or, alternatively, merely uses a
computer as a tool to perform the abstract idea.
Under analogous circumstances, the Federal Circuit has held that
“[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that
[such] data . . . was previously collected, analyzed, manipulated, and
displayed manually, and it simply proposes doing so with a computer. We
have held such claims are directed to abstract ideas.” Univ. of Fla. Research
Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019); see
also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
2016) (“Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available information in a
particular field, stating those functions in general terms, without limiting
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them to technical means for performing the functions that are arguably an
advance over conventional computer and network technology.”).
Therefore, the claim as a whole merely uses instructions to implement
the abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea. Thus, on this record, Appellant has not
shown an improvement or practical application under the guidance of MPEP
section 2106.05(a) (“Improvements to the Functioning of a Computer or to
Any Other Technology or Technical Field”) or section 2106.05(e) (“Other
Meaningful Limitations”). Nor does Appellant advance any arguments in
the Brief(s) that are directed to the Bilski machine-or-transformation test,
which would only be applicable to the method (process) claims on appeal.
See MPEP §§ 2106.05(b) (Particular Machine) and 2106.05(c) (Particular
Transformation).
Therefore, 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”
If the claims are directed to a judicial exception, and not integrated
into a practical application, as we conclude above, we proceed to the
“inventive concept” step. For Step 2B, we must “look with more specificity
at what the claim elements add, in order to determine ‘whether they identify
an “inventive concept” in the application of the ineligible subject matter’ to
which the claim is directed.” Affinity Labs, 838 F.3d at 1258.
In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract idea into
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patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any “additional
features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be
more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea17; mere instructions to implement an
abstract idea on a computer18; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the industry.19
Evaluating representative claim 1 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
estimating and displaying a competency of a network of a plurality of human
participants in developing a public value into a patent-eligible application of
that abstract idea.

17 Alice, 573 U.S. at 221–23.
18 Alice, 573 U.S. at 222–23, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer.
19 Alice, 573 U.S. at 225 (explaining using a computer to obtain data, adjust
account balances, and issue automated instructions involves computer
functions that are well-understood, routine, conventional activities).
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The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a
claim element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact.”
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the recited “processor,”
“first” and “second style of icons,” “graphical lines,” and “prompting a
user,” in method claim 1; and commensurate limitations in computer
program product claim 12 and system claim 23, the Specification discloses:
The links (51) represent relationships between the participants
in the network, while the symbols (52, 52’, 53, 53’, 54, 54’) at
the edges of the network diagram represent the contributions or
roles each participant plays in the network. At the center of the
networks are the outcomes (55, 56) for which the networks
exist. In this illustration, different shapes of icons (e.g.
rectangles/squares, pentagons, and cross-shaped polygons) have
been used to denote different types or classes of parties in the
networks in order to comply with patent drawing standards.
However, in an alternate embodiment, the icons are shown in
different colors corresponding to classes of parties in the
network.
Spec. ¶ 59.
According to the present invention, all of these steps [identified
in paragraph 76], save (f), are accomplished via a computer-
aided graphical-based application program receiving input and
definitions from a user, and providing any identified graphical
illustrations or outputs to the user via a computer display,
printed report, or equivalent.
Spec. ¶ 77.
Turning to Figure 2a, a generalized architecture is presented
including a central processing unit (21) (“CPU”), which is
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typically comprised of a microprocessor (22) associated with
random access memory (“RAM”) (24) and read-only memory
(“ROM”) (25). Often, the CPU (21) is also provided with cache
memory (23) and programmable FlashROM (26).
Spec. ¶ 108.
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 quoted above.20
With respect to this step of the analysis, Appellant argues:
Turning to the question of “significantly more”,
Appellant respectfully submits that the Examiner has already
established for the record that at least one technology has been
used to improve another technology in the nature of the cited
references. The Examiner has not drawn the cited references to
presumably anticipate all steps, elements and limitations of the
claims from a single technological field. Rather, the Examiner
has drawn from several technologies, as indicated by the
classifications of the relied-upon references: [Little, hawks, and
Sengir].
Reply Br. 5–6. Appellant further argues, “please note that the current
classification of Appellant’s claims is ‘prediction of business process
outcome or impact based on a proposed change’ (Class/subclass 705/7.37),
which is different from the technological fields in which Little, Hawks or
Sengir are classified.” Reply Br. 6.

20 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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In response, we note the Supreme Court emphasizes, “[t]he ‘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.” Diehr, 450 U.S.
at 188–89 (emphasis added). Our reviewing court further guides that
“[e]ligibility and novelty are separate inquiries.” Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see
also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263
(Fed. Cir. 2016) (holding that “[e]ven assuming” that a particular claimed
feature was novel does not “avoid the problem of abstractness”).
Second, we note that evidence of classification in different categories
by the USPTO, as referenced by Appellant, “is inherently weak . . . because
considerations in forming a classification system differ from those relating
to a person of ordinary skill seeking solution for a particular problem.” In re
Mlot-Fijalkowski, 676 F.2d 666, 670 n.5 (CCPA 1982).
The MPEP, based upon our precedential guidance, provides additional
considerations with respect to analysis of the well-understood, routine, and
conventional nature of the recited computer-related components.
Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether
the additional elements amount to more than a recitation of the
words “apply it” (or an equivalent) or are more than mere
instructions to implement an abstract idea or other exception on
a computer. As explained by the Supreme Court, in order to
transform a judicial exception into a patent-eligible application,
the additional element or combination of elements must do
“‘more than simply stat[e] the [judicial exception] while adding
the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. __,
134 S. Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014)
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(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example,
claims that amount to nothing more than an instruction to apply
the abstract idea using a generic computer do not render an
abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110
USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at
1984 (warning against a § 101 analysis that turns on “the
draftsman’s art”) . . . .
In Alice Corp., the claim recited the concept of
intermediated settlement as performed by a generic computer.
The Court found that the recitation of the computer in the claim
amounted to mere instructions to apply the abstract idea on a
generic computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984.
The Supreme Court also discussed this concept in an earlier
case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673,
676 (1972), where the claim recited a process for converting
binary-coded decimal (BCD) numerals into pure binary
numbers. The Court found that the claimed process had no
substantial practical application except in connection with a
computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The
claim simply stated a judicial exception (e.g., law of nature or
abstract idea) while effectively adding words that “apply it” in a
computer. Id.
MPEP § 2106.05(f) (“Mere Instructions To Apply An Exception”).
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a method for estimating and displaying a competency of a
network of a plurality of human participants in developing a public value
that includes a “processor,” “first” and “second style of icons,” “graphical
lines,” and “prompting a user,” in method claim 1, as argued by Appellant,
is simply not enough to transform the patent-ineligible abstract idea here into
a patent-eligible invention under Step 2B. See Alice, 573 U.S. at 221
(“[C]laims, which merely require generic computer implementation, fail to
transform [an] abstract idea into a patent-eligible invention.”).
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We conclude the claims fail the Step 2B analysis because claim 1, 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.
Therefore, in light of the foregoing, we conclude, under the Revised
Guidance, that each of Appellant’s claims 1, 10–12, 21–23, 32, and 33, each
considered as a whole, is directed to a patent-ineligible abstract idea that is
not integrated into a practical application and does not include an inventive
concept. Accordingly, we sustain the Examiner’s § 101 rejection of
independent claim 1, and grouped claims 10–12, 21–23, 32, and 33, which
fall therewith. See Claim Grouping, supra.
2. § 103(a) Rejection R2 of Claims 1, 10–12, 21–23, and 32–33
Issue 2
Appellant argues (Appeal Br. 10–16; Reply Br. 7–8) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Little, Hawks, and Sengir is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] method for estimating and displaying a competency of a
network of a plurality of human participants in developing a public value,”
that includes, inter alia, the limitations of (a) “generating, by a processor, a
computer-displayed illustration of a computer model of a hierarchical
network of contributors organized to achieve an outcome,” (b) “the
computer-displayed illustration having a first style of icons represent
capabilities required to achieve the outcome, having a second style of icons
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representing contributors in the network, and having graphical lines depicted
between the second style of icons representing relationships between
contributors which are organized to perform each capability in the network
according to the computer model,” as recited in claim 1?21
Principles of Law
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
The test for obviousness is what the combined teachings of the prior
art would have suggested to the hypothetical person of ordinary skill in the
art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). “The test for

21 Appellant does not clearly identify particular limitations of claim 1 that
allegedly are not taught or suggested by the cited combination of prior art.
Instead, for example, Appellant spends a significant portion of the Appeal
Brief presenting differences between a “Capabilities Sociogram” and an
“Influence Sociogram,” neither of which is recited in the claims. See Appeal
Br. 10–15. From our review of the file, and as best can be determined,
Appellant’s argument appears to center on the differences between Hawk’s
disclosed “influence” versus the recited “capability.” See Appeal Br. 11 et
seq.
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obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. “[O]ne cannot show non-
obviousness by attacking references individually where . . . the rejections are
based on combinations of references.” Id. at 426.
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
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Analysis
The Examiner finds the combination of Little, Hawks, and Sengir
teach or suggest all the limitations of claim 1, and particularly finds “Little
relates to a systematic, efficient process for alignment of stakeholders so that
they have common understanding and expectations. Hawks relates to
marketing using opinion leaders and an influence network. Sengir relates to
assessing collaborative relationships.” Final Act. 2.
The Examiner specifically finds:
[Little] teaches a set of style icons representing contributors in
the network (see Figure 6 disclosing “style icons” in the form of
rectangles around each network contributor) having graphical
lines depicted between the style icons representing relationships
between contributors that are organized to perform their
capability in the network (see Figure 6 disclosing lines between
the rectangle style icons representing relationships in the
network; see also ¶ 38 disclosing that “unique capabilities” and
“roles” of each stakeholder contributor in the network is
accounted for).
Final Act. 3–4. The Examiner further finds:
Specifically, Hawks discloses that different “style icons” in the
form of different shapes, such as squares, circles, ovals,
diamond, etc., represent the level of influence of that person in
the network. Such a “level of influence” is equivalent to a
capability to achieve an outcome because it represents level of
influence over other network actors. Hawks additionally
discloses the graphical arrangement of one style icon around
another. Specifically, in Figure 8, Hawks discloses placing
shapes or demarcated boundaries around the capability style
icons. The shapes represent “a community of practice” with the
“leader” the person within it with the shape icon representative
of the most influence.
Final Act. 5–6.
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In response, Appellant contends “[t]he present claims are drawn to a
computer-based tool which assists project managers to visualize, estimate,
and manage networks of participants who are each contributing a capability
towards achieving a desired outcome or objective.” Appeal Br. 10–11.
“Appellant has disclosed and is claiming a process for generating a different
kind of sociogram, one which is constructed from capabilities, relationships,
and the maturity of each of the relationships, which might be referred to as a
‘Capabilities Sociogram.’” Appeal Br. 11. Appellant further argues the
Examiner erred in equating Hawk’s “level of influence” with “the claimed
element of ‘capability,’” (id.), and continues by asserting “there are many
types of sociograms,” and “not all sociograms are equivalent because each
shows different information in a different way.” Appeal Br. 13.
However, we are not persuaded because this argument is not
commensurate with the scope of the claim, which does not recite a
“sociogram.” Moreover, the Examiner correctly points out “that Appellant’s
claims are directed toward a display of a computer graphical user interface,”
i.e., “what Appellant is claiming is a graphical user interface (i.e.,
‘computer-displayed illustration’) of a hierarchical network of contributors
with particular style icons and scores overlaid on the interface.” Ans. 5.
With respect to Appellant’s argument concerning the Examiner’s
allegedly improper equivalence between “influence” and “capability,” the
Examiner finds, and we agree, under the broadest reasonable interpretation
standard:22

22 See Morris, 127 F.3d at 1054.
Appeal 2020-000255
Application 11/304,943

36
Nowhere in Appellant’s specification is a special definition of
“capability” provided. As Appellant has stated, the definition of
“capability” includes “qualities, abilities, features, etc. that can
be used or developed, potential” (see Brief page 12). Examiner
asserts that an actor’s “influence” in a public value network (as
taught by Hawks) can be an example of a “capability,” because
influence is a quality or ability or feature that can be used or
developed. For example, an actor that has influence over
another (e.g., can persuade another of a course of action) has
the “capability” to influence those over whom the actor has
influence. This is why Examiner construed the “influence”
network taught by Hawks to be equivalent to the “capability”
network in the instant application. Influence in a network is
itself a capability, and Appellant’s arguments regarding the
distinguishability of Hawks from the instant application are not
persuasive.
Ans. 6. We note Appellant does not specifically or persuasively respond to
the Examiner’s findings and claim construction quoted above in the Reply
Brief, but instead argues the Examiner’s “disregarding the ordinary different
meanings as established by Appellant-supplied extrinsic definitions is an
error of literally reading Appellant's disclosure into the cited art.” Reply
Br. 7. We are not persuaded by Appellant’s argument, which is not
responsive to the Examiner’s explicit findings and conclusions.
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitations of claim 1, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 1, and grouped
claims 10–12, 21–23, and 32–33 which fall therewith. See Claim Grouping,
supra.
Appeal 2020-000255
Application 11/304,943

37
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 1–8) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
(1) Under our Revised Guidance, governed by relevant case law,
claims 1, 10–12, 21–23, 32, and 33 are patent-ineligible under 35 U.S.C.
§ 101, and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness Rejection
R2 of claims 1, 10–12, 21–23, 32, and 33 under 35 U.S.C. § 103(a) over the
cited prior art combination of record, and we sustain the rejection.

Appeal 2020-000255
Application 11/304,943

38
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References
Affirmed Reversed
1, 10–12, 21–
23, 32–33
101
Subject Matter
Eligibility
1, 10–12, 21–
23, 32–33

1, 10–12, 21–
23, 32–33
103(a)
Obviousness
Little, Hawks,
Sengir
1, 10–12, 21–
23, 32–33

Overall
Outcome

1, 10–12, 21–
23, 32–33

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED