Stanley K. Poon et al.

Patent Trials and Appeals Board

Dec 12, 2019

14170490 - (D) (P.T.A.B. Dec. 12, 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.
14/170,490 01/31/2014 Stanley K. Poon 102450.00100 (102795.1) 1045
108431 7590 12/12/2019
Dell c/o Jackson Walker L.L.P.
100 Congress Avenue
Suite 1100
Austin, TX 78701
EXAMINER
MITCHELL, JASON D
ART UNIT PAPER NUMBER
2199
MAIL DATE DELIVERY MODE
12/12/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STANLEY K. POON, FERDINAND N. SILVA,
YAO LU, PRAHARSH S. SHAH, RAYMOND MILKEY,
and PRABHAT D. TRIPATHI
____________________

Appeal 2017-009341
Application 14/170,490
Technology Center 2100
____________________

Before JOHN P. PINKERTON, JON M. JURGOVAN, and
NABEEL U. KHAN, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s Final
Rejection of claims 1–20, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as DELL
PRODUCTS L.P. Appeal Br. 4.
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STATEMENT OF THE CASE
Introduction
Appellant generally describes the disclosed and claimed invention as a
method for defining new resource types in an operating software system.
Spec. ¶ 3.2
Independent claim 1 and dependent claim 4 are representative of the
subject matter on appeal and read as follows (with paragraph letters added):
1. A method for defining new resource types in an operating
software system, comprising:
(a) electronically modifying a secured entity table to add
a new resource;
(b) electronically modifying a secured entity action table
to add the new resource;
(c) electronically modifying a resource type table to add
the new resource;
(d) electronically modifying a resource relation table to
add the new resource;
(e) electronically flushing one or more runtime caches to
deploy the new resource without recompiling the software
system.
4. The method of claim 1 further comprising electronically
modifying a role based access control table as a function of the
modified secured entity action table.
Claims App. 24.

2 Our Decision refers to the Final Office Action mailed June 1, 2016 (“Final
Act.”), Appellant’s Appeal Brief filed Jan. 3, 2017 (“Appeal Br.”) and Reply
Brief filed June 19, 2017 (“Reply Br.”), the Examiner’s Answer mailed Apr.
17, 2017 (“Ans.”), and the original Specification filed Jan. 31, 2014
(“Spec.”).
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Rejections on Appeal
Claims 4–6, 8–11, 15–17, 19, and 20 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the enablement requirement.
Final Act. 6.
Claims 4–6, 8–11, 15–17, 19, and 20 stand rejected under 35
U.S.C.§ 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the applicant regards
as the invention. Final Act. 6–7.
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception without significantly more. Final Act. 7–9.
Claims 1, 3, 4, 6–15, and 17–20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Marca (US 5,050,074; issued Sept. 17,
1991) in view of Zenz (US 2005/0144610 A1; published June 30, 2005).
Final Act. 10–16.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marca and Zenz, in view of Perron et al. (US 7,757,121
B1; issued July 13, 2010) (“Perron”). Final Act. 17–18.
Claims 5 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marca, Zenz, and Ahadian et al. (US 2008/0320441 A1;
published Dec. 25, 2008) (“Ahadian”). Final Act. 18–19.

ANALYSIS
I. Rejection for Lack of Enablement
The Examiner rejects claims 4–6, 8–11, 15–17, 19, and 20 under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement. Final Act. 6. In the rejection, the Examiner discusses claim 4,
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which recites “electronically modifying a role based access control table as a
function of the modified secured entity action table.” The Examiner finds
that the Specification “does not appear to disclose a relationship between
modifications to these two tables” and concludes that “those of ordinary skill
in the art would not understand how to make and or use the invention
commensurate with the claims. Id. The Examiner also finds that claims 5,
6, 8–11, 15–17, 19, and 20 “similarly recite modifications ‘as a function of’
other modifications and are rejected similarly to claim 4.” Id.
With respect to claim 4, Appellant argues that the disclosures of
paragraphs 29 and 141 of the Specification, and Figures 1 and 11, are
sufficient, together with the rest of the Specification, for a person of ordinary
skill in the art to implement the claimed modification. Appeal Br. 8–11. In
that regard, Appellant also argues that a person of ordinary skill in the art
would be “someone with a master’s degree in computer science and four
years of experience in the programming of programming operating
systems.” Id. at 9, 11. Appellant further argues that paragraph 141 of the
Specification provides “an explanation of the functional relationship for
modifying a role based access control table as a function of the modified
secured entity action table, that is, by using role-based access control tables
include roles 1102, privileges 1106, role-privilege 1104, secure entities
1108, secured entity actions 1110, resource types 1112, relation types 1114,
resources 1118, XML payloads 1120 and resource relations 1116, as shown
[] in Figure 11.” Id. at 10. With respect to claims 5, 6, 8–11, 15–17, 19, and
20, Appellant argues the Examiner provides “no support whatsoever” for the
rejection. Id. at 11.
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In the Answer, the Examiner finds that the combination of paragraph
29 of the Specification and Figure 1, and the combination of paragraph 141
of the Specification and Figure 11, do not provide an enabling disclosure of
the claimed “modifying a role based access control table as a function of a
modified secured entity action table.” Ans. 5–7.
A specification complies with the enablement requirement if it allows
a person of ordinary skill in the art to make and use the claimed invention
without undue experimentation. See In re Wright, 999 F.2d 1557, 1561
(Fed. Cir. 1993); Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750
F.2d 1569, 1576 (Fed. Cir. 1984). Illustrative factors we consider in
determining whether a disclosure teaches an ordinarily skilled artisan to
make and use the invention without undue experimentation include (1) the
quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples, (4)
the nature of the invention, (5) the state of the prior art, (6) the relative skill
of those in the art, (7) the predictability or unpredictability of the art, and (8)
the breadth of the claims. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
To be enabling, the patent specification must teach ordinarily skilled
artisans how to make and use the claimed invention without “undue
experimentation.” In re Wright, 999 F.2d at 1562 (citations omitted).
However, it is irrelevant whether the specification provides this teaching
through broad terminology or illustrative examples. Id. Moreover, “the
PTO bears an initial burden of setting forth a reasonable explanation as to
why it believes that the scope of protection provided by that claim is not
adequately enabled by the description of the invention provided in the
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specification . . . includ[ing] . . . providing sufficient reasons for doubting
any assertions in the specification.” Id. at 1561–62 (emphasis added).
“[A]n invention may be enabled even though it has not been
described.” University of Rochester v. G.D. Searle & Co., 358 F.3d 916,
921 (Fed. Cir. 2004); see, e.g., In re DiLeone, 436 F.2d 1404, 1405 (CCPA
1971) (“[I]t is possible for a specification to enable the practice of an
invention as broadly as it is claimed, and still not describe that invention.”).
In Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1334 (Fed.
Cir. 2003) (citation omitted), the court explained that:
The enablement requirement is often more indulgent than
the written description requirement. The specification need not
explicitly teach those in the art to make and use the invention;
the requirement is satisfied if, given what they already know, the
specification teaches those in the art enough that they can make
and use the invention without “undue experimentation.”
After considering the Wands factors, we determine that, on this
record, the Examiner has failed to meet the Office’s burden of showing that
claims 4–6, 8–11, 15–17, 19, and 20 are not enabled. In particular, the
Examiner does not provide persuasive evidence or adequate technical
explanation to establish that the Specification does not teach those of
ordinary skill in the art how to make and use the invention of claim 4 or the
other rejected claims without “undue experimentation.” The Examiner does
not consider or analyze the Wands factors. Importantly, Appellant asserts
that the level of ordinary skill in the art is high, and the Examiner does not
dispute or challenge this assertion. Based on the Specification and the prior
art of record, we agree with Appellant that the level of ordinary skill in the
art is high. Thus, based on the record here, we determine the Examiner has
not adequately shown that the claims are not enabled or why undue
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experimentation would be required for the ordinarily skilled artisan to make
the modifications recited in the claims. Accordingly, we do not sustain the
Examiner’s rejection of claims 4–6, 8–11, 15–17, 19, and 20 under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.
II. Rejection for Indefiniteness
The Examiner rejects claims 4–6, 8–11, 15–17, 19, and 20 under 35
U.S.C. § 112, second paragraph, for indefiniteness. Final Act. 7. Regarding
claim 4, the Examiner finds “[i]t is not clear what the applicant intends by
‘modifying . . . as a function of.’” Id. The Examiner also finds “it is not
clear, for example, if this modification ‘of role based access control table’ is
intended to be an inherent result of the modification of the ‘secured entity
action table’ or a separate action taken automatically by the system in
response to a modification of the ‘secured entity action table.’” Id.
Regarding claims 5, 6, 8–11, 15–17, 19, and 20, the Examiner finds they
similarly recite modifications “as a function of” and “are rejected similarly
to claim 4.” Id.
Appellant argues the Examiner has not applied the controlling law for
determining definiteness because “the focus on a definiteness rejection is
what one of ordinary skill in the art would understand from the claim
language, not what the Applicant ‘intends,’ or whether the claims are
supported by the disclosure.” Appeal Br. 11–12. Appellant also argues the
Examiner has not addressed claims 5, 6, 8–11, 15–17, 19, and 20, “which are
directed to other limitations and which must be separately analyzed.” Id. at
12. In response, the Examiner notes “that [A]ppellant has not indicated what
the [A]ppellant believes one of ordinary skill in the art would understand
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from the claim language” and finds that “the claim language does not
describe a particular and distinct scope for the claim” because a person of
ordinary skill would not have understood if the modification required an
additional step (automatic or manual) or if it somehow inherently results.
Ans. 8–9. The Examiner also finds that one would understand from a fair
reading of the rejection that claims 5, 6, 8–11, 15–17, 19, and 20 “are
rejected separately from, but for the same reasons as, claim 4.” Id. at 9.
We are persuaded by Appellant’s argument that the Examiner erred.
Under 35 U.S.C. § 112, second paragraph, the test for definiteness is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Language in a
claim is unclear if, when given its broadest reasonable interpretation, it is
“ambiguous, vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention . . .,” In re Packard, 751 F.3d 1307, 1311
(Fed. Cir. 2014), or if it is “is amenable to two or more plausible claim
constructions . . . ,” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI
2008) (precedential).
Claim 4 expressly recites modifying a role based access control table
“as a function of” the modified secured entity action table. In view of the
language of claim 4, we determine there is no ambiguity or lack of clarity in
claim 4 because a person of ordinary skill would understand that one table—
“a role based access control table”— is modified “as a function of” or “as a
result of” the modification to another table—“the modified secured entity
action table.” The Examiner finds claim 4 does not state whether the
modification of a “role based access control table” is an inherent result of the
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modification of the “secured entity action table” or whether a separate action
(automatic or manual) is required. Final Act. 7; Ans. 8–10. Although we
agree with the Examiner that claim 4 is broad in this respect, “[b]readth is
not indefiniteness.” In re Gardner, 427 F.2d 786, 788 (CCPA 1970).
Thus, we determine that claim 4 is not indefinite because for the
reasons stated supra, it is not ambiguous or unclear, and the scope of the
claim would be reasonably ascertainable to a person of ordinary skill in the
art. Accordingly, we do not sustain the Examiner’s rejection of claim 4, and
claims 5, 6, 8–11, 15–17, 19, and 20, under 35 U.S.C. § 112, second
paragraph.
III. Section 101 Rejection
A. Applicable Law
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
[the] claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo
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Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an “inventive concept,” “an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office recently issued guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Revised Guidance”). Under the Revised Guidance, to
decide whether a claim is directed to an abstract idea, we evaluate whether
the claim (1) recites one of the abstract ideas listed in the Revised Guidance
(“Prong One”) and (2) fails to integrate the recited abstract idea into a
practical application (“Prong Two”). See Revised Guidance, 84 Fed. Reg. at
51, 54. If the claim is directed to an abstract idea, as noted above, we then
determine whether the claim has an inventive concept. The Revised
Guidance explains that when making this determination, we should consider
whether the additional claim elements add “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field” or “simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we first analyze whether claim 1 is
directed to an abstract idea.3

3 Appellant argues independent claims 1, 11, and 12 together. Appeal Br.
12–13. Thus, we decide the appeal based on representative claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).
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B. Abstract Idea
In analyzing the limitations of the claims, the Examiner determines
that claim 1 “is directed to defining new resource types in an operating
software system, comprising: . . . modifying a secured entity table . . . a
secured entity action table . . . a resource type table . . . [and] a resource
relation table.” Final Act. 8. The Examiner also determines that “[t]hese
steps describe the collection and organization of data which has been found
to be no more than an abstract idea.” Id. (citing CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (holding that method
steps that can be performed in the human mind, or by a human using a pen
and paper, are unpatentable mental processes)); see also Ans. 10.
Appellant contends that the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 is improper. See Appeal Br. 12–13; Reply Br. 2–3.
Appellant argues the Examiner has overgeneralized the claim to “its ‘gist’ or
core principles” in a manner that the 2016 Guidance4 and McRO5 have stated
is wrong. Appeal Br. 12.
In the Answer, the Examiner finds that “[A]ppellant has not indicated
any specific requirements of the claim that are believed to have been omitted
as a result of the alleged overgeneralization, nor has the appellant indicated
[any] [] specific improvement to an existing technological process.” Ans.
10. The Examiner also finds that “[a] table, regardless of its name, describes
nothing more than an abstract collection of data, and modifications to an

4 Citing Memo from Robert W. Bahr to Patent Examining Corps, “Recent
Subject Matter Eligibility Decisions,” dated November 2, 2016 (the “2016
Guidance”).
5 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
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abstract collection of data are similarly abstract.” Id. at 11. In the Reply
Brief, Appellant argues the Federal Circuit specifically held that the
Examiner’s rationale that “any mention of a table in the claims renders the
claims abstract” is legally flawed. Reply Br. 2–3 (citing Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016)).
1. USPTO Step 2A, Prong One
Beginning with prong one of the first step of Alice, we must determine
“whether the claims at issue are directed to one of those patent-ineligible
concepts,” including the abstract ideas enumerated in the Revised Guidance.
Alice, 573 U.S. at 217. One of the subject matter groupings identified as an
abstract idea in the Revised Guidance is “[m]ental processes—concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion).” See Revised Guidance, 84 Fed. Reg. at 52, 53. The
Revised Guidance explains that “[m]ental processes” include acts that
people can perform in their minds or using pen and paper, even if the claim
recites that a generic computer component performs the acts. See Revised
Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”)
(emphasis omitted).
Here, we determine that claim 1 recites the abstract idea of “[m]ental
processes.” Each of limitations (a)–(d) recites “modifying” a specific
“table.” The function of modifying data in a table can be performed by a
person using a pen to make or write on paper the changes or modifications to
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the data. Thus, limitations (a)–(d) of claim 1 recite the abstract idea of
“mental processes.”
Although limitations (a)–(d) of claim 1 recite modifying each table
“electronically,” we determine these limitations are nevertheless in the
mental processes category. If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot be performed practically in the mind. See,
e.g., Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented
steps, there is nothing in the claims themselves that foreclose them from
being performed by a human, mentally or with pen and paper.”); Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)
(characterizing collecting information, analyzing information by steps
people go through in their minds, or by mathematical algorithms, and
presenting the results of collecting and analyzing information, without more,
as matters within the realm of abstract ideas); CyberSource, 654 F.3d at
1372, 1375–76 (holding that the incidental use of “computer” or “computer
readable medium” does not make a claim otherwise directed to process that
“can be performed in the human mind, or by a human using a pen and
paper” patent eligible, explaining that “purely mental processes can be
unpatentable, even when performed by a computer”). Because limitations
(a)–(d) of claim 1 merely recite “modifying” a “table,” we determine there is
no reason these limitations cannot be performed practically by a person with
pen and paper.
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Accordingly, we determine that claim 1 recites the abstract idea of
“[m]ental processes.”
2. USPTO Step 2A, Prong Two
Because we determine that claim 1 recites an abstract idea, we turn to
prong two of the first step of the Alice analysis and consider whether claim 1
integrates this abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. In doing so, we consider whether there are
any additional elements beyond the abstract idea that, individually or in
combination, “integrate the [abstract idea] into a practical application, using
one or more of the considerations laid out by the Supreme Court and the
Federal Circuit.”6 Revised Guidance, 84 Fed. Reg. at 54–55.
The Examiner finds that claim 1 recites the additional elements of
“electronically” modifying each table and “electronically flushing one or
more runtime caches.” Ans. 11. The Examiner also finds that
“electronically” modifying a table describes no more than conventional
computing to change data and that “electronically flushing” a cache is no
more than a conventional method of removing data from that cache. Id.; see
also Final Act. 8. The Examiner further finds that “the additional elements,
taken individually or in combination, only indicate that the claimed method
is performed using conventional computing technology and thus do not
direct the claims to significantly more than the abstract collection and
manipulation of data.” Id.

6 We acknowledge that some of these considerations may be properly
evaluated under step 2 of Alice (step 2B of the Revised Guidance). Solely
for purposes of maintaining consistent treatment within the Office, we
evaluate it under step 1 of Alice (step 2A, prong two, of the Revised
Guidance). See Revised Guidance, 84 Fed. Reg. at 54–55.
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Appellant argues that the Examiner finds that “any mention of a table
in the claims renders the claims abstract,” which is legally flawed. Reply
Br. 3. Appellant also argues that “[t]he claims are ‘directed to a specific
implementation of a solution to a problem in the software arts,’ as were the
claims in Enfish.” Id.
We agree with the Examiner. First, Appellant does not address the
Examiner’s findings (1) that “electronically” modifying a table “describes no
more than conventional computing to change data” and (2) that
“electronically flushing” a cache “[is] a conventional method of removing
data from that cache.” Ans. 11. Accordingly, we agree with the Examiner’s
findings.
Second, we are not persuaded by Appellant’s argument that the
rationale relied on by the Examiner is flawed. Contrary to Appellant’s
argument, the Examiner did not find that “any mention of a table in the
claims renders the claims abstract.” Reply Br. 3. Instead, a fair reading of
the Examiner’s finding is that the tables recited in claim 1 describe nothing
more than an abstract collection of data and that the claimed modifications
are similarly abstract because “such collection and modification could be
performed using pencil and paper.” Ans. 11.
Third, we are not persuaded by Appellant’s argument that the claims
here are analogous to those in Enfish. Reply Br. 3. In Enfish, the claims
were “specifically directed to a self-referential table for a computer
database.” Enfish, 822 F.3d at 1337. The claims were, therefore, “directed
to a specific improvement to the way computers operate,” rather than an
abstract idea implemented on a computer. Id. at 1336. The claims here, in
contrast, are not directed to an improvement in the way computers operate.
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In that regard, Appellant has failed to demonstrate that claim 1 requires any
asserted inventive programming, requires any specialized computer
hardware or other inventive computer components, i.e., a particular machine,
or that the claimed invention is performed using other than generic computer
components. Nor has Appellant identified any disclosure in the
Specification of any inventive techniques or specialized computer
components to perform the recited limitations of claim 1.
Fourth, we are not persuaded by Appellant’s argument that the
Examiner overgeneralized claim 1 because the Examiner considered and
analyzed all of the limitations of the claim. See Ans. 10–11.
Fifth, Appellant’s arguments do not persuade us that limitation (e) of
claim 1 integrates the judicial exception into a practical application.
Limitation (e) recites “electronically flushing one or more runtime caches to
deploy the new resource without recompiling the software system.” Absent
a recitation in the claim to explain what the relationship is between flushing
a runtime cache and deploying a new resource without recompiling the
software system, we determine that limitation (e) is merely post-solution
activity to implement or output the mental steps. This step recites the type
of insignificant extra-solution activity the courts have determined
insufficient to transform judicially excepted subject matter into a patent-
eligible application. See 84 Fed. Reg. at 55, 55 n.31; Bancorp Servs., L.L.C.
v. Sun Life Assur. Co. of Can., 771 F. Supp. 2d 1054, 1065 (E.D. Mo. 2011)
aff’d, 687 F.3d 1266 (Fed. Cir. 2012) (explaining that “providing data . . .
[is] insignificant post solution activity”); Bilski v. Kappos, 561 U.S. 593, 612
(2010) (holding the use of well-known techniques to establish inputs to the
abstract idea as extra-solution activity that fails to make the underlying
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concept patent eligible); see also Parker v. Flook, 437 U.S. 584, 590 (1978)
(explaining “[t]he notion that post-solution activity, no matter how
conventional or obvious in itself, can transform an unpatentable principle
into a patentable process exalts form over substance”); Elec. Power, 830
F.3d at 1354 (recognizing “that merely presenting the results of abstract
processes of collecting and analyzing information, without more (such as
identifying a particular tool for presentation), is abstract as an ancillary part
of such collection and analysis”).
Thus, we determine that the additional elements recited in claim 1 do
not integrate the recited abstract idea into a practical application. See
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed.
Cir. 2016) (“In this case, the claims are directed not to an improvement in
cellular telephones but simply to the use of cellular telephones as tools in the
aid of a process focused on an abstract idea. That is not enough to constitute
patentable subject matter.”); Revised Guidance, 84 Fed. Reg. at 55
(explaining that courts have identified “merely us[ing] a computer as a tool
to perform an abstract idea” as an example of when a judicial exception may
not have been integrated into a practical application). Further, consistent
with the Examiner’s findings, and in view of Appellant’s Specification, we
conclude that claim 1 does not integrate the judicial exception into a
practical application, and thus is directed to the judicial exception. In
particular, we determine claim 1 does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
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(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a)–(c), (e)–(h).
3. USPTO Step 2B – Inventive Concept
Finally, we consider whether claim 1 has an inventive concept, that is,
whether any additional claim elements “‘transform the nature of the claim’
into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo,
566 U.S. at 78, 79). This requires us to evaluate whether the additional
claim elements add “a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the field” or
“simply append[] well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality.”
Revised Guidance, 84 Fed. Reg. at 56.
As stated supra, the Examiner finds that claim 1’s “electronically”
modifying a table describes no more than conventional computing to change
data and “electronically flushing” a cache is no more than a conventional
method of removing data from that cache. Ans. 11. Furthermore, like the
“cache,” the claimed “software operating system” is a generic computer
element recited at a high level of generality that fails to transform the
judicial exception into patent-eligible subject matter. Although Appellant
argues that the claims are analogous to Enfish, for the reasons discussed
supra, we determine the claims here are not directed to an improvement in
the way computers operate. Appellant has failed to demonstrate that claim 1
or the Specification requires any asserted inventive programming, requires
any specialized computer hardware or other inventive computer components,
i.e., a particular machine, or that the claimed invention is performed using
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other than generic computer components. Thus, we agree with the
Examiner’s finding that “the additional elements, taken individually or in
combination, only indicate that the claimed method is performed using
conventional computing technology and thus do not direct the claims to
significantly more than the abstract collection and manipulation of data.” Id.
Accordingly, considering claim 1 as a whole, we determine that the
additional elements recited in claim 1 do not provide “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field.” Revised Guidance, 84 Fed. Reg. at 56.
Rather, these elements “simply append[] well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality.” Id. Accordingly, we agree with the Examiner that
claim 1 does not have an inventive concept.
5. Conclusion
Because we determine that claim 1 is directed to an abstract idea and
does not contain an inventive concept, we sustain the Examiner’s rejection
of claim 1 under 35 U.S.C. § 101. For the same reasons, we sustain the
Examiner’s rejection under 35 U.S.C. § 101 of independent claims 11 and
12, and dependent claims 2–10 and 13–20, which are not argued separately
substantively.
IV. Section 103(a) Rejections
The Examiner rejects claims 1, 3, 4, 6–15, and 17–20 under 35 U.S.C.
§ 103(a) for obviousness over the combination of Marca and Zenz. Final
Act. 10–16. In particular, regarding claim 1, the Examiner finds that “Marca
discloses a number of populated tables defining the functionality of various
resources in a software system (col. 2, lines 38–44 ‘an actor/role table 14, a
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role/object table 15, a state/action table 16 and a state transition table 17’)”
and that “those of ordinary skill in the art would have understood that adding
a new resource to the system would be accomplished by modifying (i.e.
adding rows to) the tables.” Ans. 12. The Examiner also finds that “Zenz
teaches electronically flushing one or more runtime caches to deploy the
new resource without recompiling the software system (par [0046] ‘the node
invalidates the corresponding configuration in its configuration cache . . .
subsequently reload the configuration into the cache’).” Final Act. 11. The
Examiner further finds:
It would have been obvious at the time of invention to flush a
cache (Zenz par. [0046] “invalidates the corresponding
configuration in its configuration cache) containing Marca’s
configuration data (e.g. Fig 3). Those of ordinary skill in the art
would have been motivated to do so to “facilitate management
of configuration data” (Zenz par. [0011] when “performing
configuration modifications” (e.g. Zenz par. [0043]) of Marca’s
system.
Id.
The Examiner rejects claim 2 as being unpatentable over Marca in
view of Zenz and Perron and rejects claims 5 and 16 as being unpatentable
over Marca, Zenz, and Ahadian. Final Act. 17–19.
We have reviewed the Examiner’s rejections of claims 1–20 in light
of Appellant’s arguments that the Examiner erred. See Appeal Br. 13–23;
Reply Br. 3–5. We have also reviewed the Examiner’s response to
Appellant’s arguments and the evidence of record. See Ans. 11–27. On the
record before us, we find the preponderance of the evidence supports the
Examiner’s (1) findings that the combined teachings of the cited references
teach or suggest the disputed limitations of the claims and (2) conclusions
that the combined teachings and suggestions of the cited references would
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have rendered the subject matter of claims 1–20 obvious under 35 U.S.C.
§ 103(a).
We disagree with Appellant’s contentions that the Examiner erred.
The Examiner has provided a detailed and comprehensive response,
supported by evidence based on the teachings of the cited references, to each
of Appellant’s contentions and arguments. Accordingly, we adopt as our
own the findings and reasons set forth by the Examiner in the Office Action
from which this appeal is taken (Final Act. 10–19) and in the Examiner’s
Answer in response to Appellant’s Brief (Ans. 11–27). We also concur with
the conclusions reached by the Examiner. For emphasis, we consider and
highlight specific arguments as presented in Appellant’s Briefs.
Regarding claim 1, we are not persuaded by Appellant’s argument
that the Examiner’s finding that those “of ordinary skill in the art would
have understood that developing a system as described by Marca would
necessarily require modifying the tables to add the resources and associated
functionality” is essentially attempting to take Official Notice of an alleged
fact. Appeal Br. 13–14. Instead, we agree with the Examiner that the
rejection does not rely on Official Notice, but Marca’s disclosure of a
number of populated tables defining the functionality of various resources in
a software system—an actor/role table 14, a role/object table 15, a
state/action table 16 and a state transition table 17—and the understanding of
a person of ordinary skill that adding a new resource to Marca’s system
would be accomplished by modifying the tables. Ans. 12; Final Act. 11–12
(“Further, those of ordinary skill in the art would have understood that any
desired changes to the system would, at least obviously, require
modifications to existing resources”). The Examiner did not err by relying
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on the knowledge of a person of ordinary skill because the obviousness
“analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also Perfect
Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009)
(“[H]old[ing] that while an analysis of obviousness always depends on
evidence that supports the required Graham factual findings, it also may
include recourse to logic, judgment, and common sense available to the
person of ordinary skill that do not necessarily require explication in any
reference or expert opinion”). Additionally, the Supreme Court informs us
that “[a] person of ordinary skill is also a person of ordinary creativity, not
an automaton.” KSR, 550 U.S. at 421.
We are also not persuaded by Appellant’s argument that it makes no
sense to modify Marca’s tables “to add the same new resource.” Appeal Br.
14–15. As the Examiner’s finds, and we agree, claim 1 does not recite
adding a new resource, but only modifying the tables “for the purpose of
adding a new resource.” Ans. 13. And, as the Examiner explains, the same
data is not added to each table:
For example an actor may be given the role in which case,
data would be added to Marca’s “actor/role” table to reflect
this. The role given to the actor may be able to take certain
actions regarding an object, and data reflecting this would be
added to Marca’s “role/object table”. Further, if one of the
actions can only be taken on an object once that object is in a
particular state, data indicating that would be added to Marca’s
“state/action table”. Finally, that action may result in the object
being in a different ‘state”, and data indicating this would be
placed into Marca’s “state transition table”. Thus in conjunction,
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the “actor/role”, “role/object”, “state/action” and “state
transition” tables define the functionality of an object as well as
who can interact with it and when. Accordingly it should be seen
that, contrary to the [A]ppellant’s assertion, the same data is not
added to the “actor/role table” and the “state/action” table.
Id.
We are further not persuaded by Appellant’s arguments attempting to
distinguish Marca’s tables from the tables recited in the claims and described
in paragraph 141 of the Specification. Appeal Br. 15–16. In that regard, we
agree with the Examiner that claim 1 does not recite the table structure
described in paragraph 141 and, therefore, claim 1 is not limited to that table
structure. Ans. 14. We also agree with the Examiner that the broadest
reasonable interpretation of the recited tables of claim 1 “does not exclude
the table structure disclosed in par[agraph] [141] and more importantly,
includes the table structure disclosed in Marca.” Id.; see also id. at 15–16.
Appellant’s argument that Zenz does not relate to a runtime cache is
not persuasive. Appeal Br. 16. We agree with the Examiner that Zenz’s
cache “is used to store and access data at runtime” (Ans. 16 (citing Zenz
¶ 33)) and that Zenz’s flushing is performed to, among other things, deploy
new resources (id. (citing id. ¶ 44)). Thus, we also agree with the Examiner
that Zenz teaches “flushing a runtime cache(s) to deploy new resources as
claimed.” Ans. 16.
We are not persuaded either by Appellant’s arguments that the
Examiner failed to provide a sufficient rationale for a person of ordinary
skill in the art to use Zenz to modify Marca, because Marca is silent as to
configuration modifications, much less whether they would be performed
without recompiling the system. Appeal Br. 16. The Examiner finds it
would have been obvious to flush a cache containing Marca’s configuration
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data, and those of ordinary skill in the art would have been motivated to do
so to “facilitate management of configuration data” (Final Act. 11 (citing
Zenz ¶ 11)) when “performing configuration modifications” (Final Act. 11
(citing Zenz ¶ 43)) of Marca’s system. Although Appellant argues that
Marca is silent about configuration modifications, we agree with the
Examiner that a fair reading of Marca’s disclosure of tables populated with
data indicating which objects exist in the system, what actions can be
performed on them, and which actors can perform the actions “define a
‘configuration’ of the system.” Ans. 17. The Examiner also finds that a
person of ordinary skill would have been motivated to modify this
configuration of Marca when necessary or desirable, as evidenced by Zenz.
Id. (citing Zenz ¶ 43 (“a user or network administrator attempts to modify
the configuration data”)). Contrary to Appellant’s argument, we find the
Examiner’s stated rationale for using Zenz to modify the configuration of
Marca’s system constitutes articulated reasoning with some rational
underpinning in accordance with KSR. See KSR, 550 U.S. at 418. In
addition, Appellant’s argument that neither Marca nor Zenz mentions
compilation is not persuasive because as the Examiner finds, those of
ordinary skill in the art would understand that a compilation is not
performed as part of the flushing/deploying in the references. Ans. 17.
Regarding independent claim 11, Appellant recites the limitations of
the claim and argues that “[a]s discussed above, the combination of Marca
and Zenz fail[s] to disclose these limitations, but even if they did, the Office
has provided no explanation whatsoever of how Marca and Zenz disclose
performing the claimed method steps in the order claimed.” Appeal Br. 19–
20. We are not persuaded by Appellant’s argument for several reasons.
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First, the Examiner finds, and we agree, Appellant does not identify “what
‘specific order’ is claimed or how Marca and Zenz fail to teach this order.”
Ans. 24. Appellant’s argument amounts to no more than vaguely referring
to claim elements and alleging the cited prior art is deficient, which does not
constitute a separate argument for patentability of the claim. See 37 C.F.R.
§ 41.37(c)(1)(iv) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”);
see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that
the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”).
Second, with respect to the order of performance of steps of a method
claim, “[u]nless the steps of a method [claim] actually recite an order, the
steps are not ordinarily construed to require one.” Interactive Gift Express,
Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001); see also
Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369–70 (Fed. Cir. 2003)
(finding reversible error to interpret method claims as requiring a specific
order even though the patent’s specification disclosed only a single
embodiment). However, a method claim may be construed to require that
the steps be performed in a specific order where “the claim implicitly
requires order, for example, if the language of a claimed step refers to the
completed results of the prior step,” or if “the claim language, as a matter of
logic or grammar, requires that the steps be performed in the order written,
or the specification directly or implicitly requires” an order of steps. See
Kaneka Corp. v. Xiamen Kingdomway Grp. Co., 790 F.3d 1298, 1306 (Fed.
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Cir. 2015); TALtech Ltd. v. Esquel Apparel, Inc., 279 F. App’x 974, 978
(Fed. Cir. 2008). Here, we agree with the Examiner’s conclusion that the
claim does not explicitly recite a specific order for the steps of claim 11 and
provides only an implicit order (1) “where the flushing of the cache comes
after one or more of the modifications” to a particular table and (2) where
the limitation is directed to modifying a table “as a function of” a
modification to another table. Ans. 24.
Third, for the reasons stated by the Examiner, which we adopt as our
own, we agree with the Examiner’s findings that “Marca and Zenz teach the
ordering implied by the claims.” Ans. 25–26.
Accordingly, for these reasons, and for the reasons and findings set
forth by the Examiner with respect to claims 2–10 and 12–20, with which
we agree and adopt as our own, we determine that (1) the combined
teachings of the cited references teach or suggest the disputed limitations of
claims 1–20, and (2) the Examiner set forth sufficient rationales, which
constitute articulated reasoning with some rational underpinning, that would
have motivated a person of ordinary skill to combine the teachings of the
references to achieve the claimed invention, and, therefore, that the
combination of the cited references would have rendered claims 1–20
obvious under § 103(a). Thus, we sustain the Examiner’s rejections of
claims 1–20 under 35 U.S.C. § 103(a).

CONCLUSION
We reverse the Examiner’s rejection of claims 4–6, 8–11, 15–17, 19,
and 20 under 35 U.S.C. § 112, first paragraph, for failing to comply with the
enablement requirement.
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We reverse the Examiner’s rejection of claims 4–6, 8–11, 15–17, 19,
and 20 under 35 U.S.C. § 112, first paragraph, for indefiniteness.
We affirm the Examiner’s rejection of claims 1–20 under 35 U.S.C.
§ 101.
We affirm the Examiner’s rejection of claims 1, 3, 4, 6–15, and 17–20
under 35 U.S.C. § 103(a) as being unpatentable over Marca and Zenz.
We affirm the Examiner’s rejection of claim 2 under 35 U.S.C.
§ 103(a) as being unpatentable over Marca, Zenz, and Perron.
We affirm the Examiner’s rejection of claims 5 and 16 under 35
U.S.C. § 103(a) as being unpatentable over Marca, Zenz, and Ahadian.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R.
§ 41.50(a)(1).
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
4–6, 8–11,
15–17, 19,
20
112, 2nd
paragraph
Enablement 4–6, 8–11,
15–17, 19,
20
4–6, 8–11,
15–17, 19,
20
112, 1st
paragraph
Indefiniteness 4–6, 8–11,
15–17, 19,
20
1–20 101 Eligibility 1–20
1, 3, 4, 6–
15, 17–20
103(a) Marca, Zenz 1, 3, 4, 6–
15, 17–20

2 103(a) Marca, Zenz,
Perron
2
5, 16 103(a) Marca, Zenz,
Ahadian
5, 16
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Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
No 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