Vincent Beraudier et al.

Patent Trials and Appeals Board

Jul 22, 2019

13861483 - (D) (P.T.A.B. Jul. 22, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/861,483 04/12/2013 Vincent Beraudier RSW920110082US1 (759) 1623
46320 7590 07/22/2019
Shutts & Bowen LLP
STEVEN M. GREENBERG
525 Okeechobee Blvd
# 1100
West Palm Beach, FL 33401
EXAMINER
KASSIM, HAFIZ A
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
07/22/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PMetlika@shutts.com
aschneider@shutts.com
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte VINCENT BERAUDIER, PHILIPPE COURONNE,
and GEORGES-HENRI MOLL1
____________________

Appeal 2018-002761
Application 13/861,483
Technology Center 3600
____________________

Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 23–33, which are all claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 2.
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STATEMENT OF THE CASE2
The Invention
Appellants’ disclosed embodiments and claimed invention relate to
“business rules management and more particularly to integrated business
rules and constraints.” Spec. ¶ 2.
Representative Claim
Claim 23, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested prior-art limitation):
23. A computer program product for rules processing with
mixed integer programming (MIP) constraints for integrated
business rule management system (BRMS) and MIP technology
application deployment in a computer, the computer program
product comprising:
a non-transitory computer readable storage medium
having computer readable program code embodied therewith,
the computer readable program code comprising:
computer readable program code for receiving a
set of candidate rules each having a left hand side and a
right hand side;
computer readable program code for determining,
for each candidate rule, by machine logic, whether a no-
failure condition is met, with the no-failure condition
being considered as met when a mixed integer
programming (MIP) constraint of a left hand side of a
corresponding enveloping rule for the candidate rule did
not fail;

2 Our decision relies upon Appellants’ Appeal Brief (“App. Br.,” filed
Oct. 13, 2017); Reply Brief (“Reply Br.,” filed Jan. 16, 2018); Examiner’s
Answer (“Ans.,” mailed Nov. 15, 2017); Final Office Action (“Final Act.,”
mailed June 5, 2017); and the original Specification (“Spec.,” filed
Apr. 12, 2013).
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computer readable program code for removing, by
machine logic from the set of candidate rules, any of the
rules in the candidate set for which a no-failure condition
is not met, but selecting, by the machine logic from the
set of candidate rules, a conflict set of selected rules such
that each selected rule has been determined to meet the
no-failure condition;
computer readable program code for generating an
agenda, including an agenda order, for the conflict set of
selected rules that ranks the conflict set of the selected
rules; and
computer readable program code for applying the
rules in the conflict set in agenda order to a working
memory of a rules engine in a business rules management
system (BRMS).
Related Appeals
This Appeal is related to Appeal No. 2018-002718 of co-pending
Application Ser. No. 14/227,794, in which we affirmed the Examiner’s
rejection.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Belcsak et al.
(“Belcsak”)
US 2005/0182709 A1 Aug. 18, 2005
Proctor et al.
(“Proctor”)
US 2008/0301079 A1 Dec. 4, 2008

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Rejections on Appeal
R1. Claims 23–33 stand provisionally rejected on the grounds of
non-statutory obviousness-type double patenting (OTDP) as being
unpatentable over claims 11–16 of copending U.S. Application
No. 14/227,794. Final Act. 11.
R2. Claims 23–33 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 15.
R3. Claims 23–33 stand rejected under 35 U.S.C. § 112(a) as
lacking written description support. Final Act. 19.
R4. Claims 23–33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Proctor and Belcsak. Final Act. 26.
CLAIM GROUPING
Based on Appellants’ arguments (App. Br. 4–25) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible
subject matter Rejection R2 of claims 23–33 on the basis of representative
claim 23; we decide the appeal of written description Rejection R3 of claims
23–33 on the basis of representative claim 23; and we decide the appeal of
obviousness Rejection R4 of claims 23–33 on the basis of representative
claim 23.3 We address provisional Rejection R1, infra.

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 Appellants do 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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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
Based upon our de novo review of the record in light of recent
USPTO Revised Guidance with respect to patent-eligible subject matter
Rejection R2 under 35 U.S.C. § 101, we disagree with Appellants’
arguments with respect to claims 23–33.
However, based upon our review of the record, we find a
preponderance of the evidence supports particular arguments advanced by
Appellants with respect to written description Rejection R3 of claims 23–33
under 35 U.S.C. § 112(a).
Finally, we disagree with Appellants’ arguments with respect to
obviousness Rejection R4 of claims 23–33 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 Appellants’ arguments.
We highlight and address specific findings and arguments regarding
claim 23 for emphasis as follows.
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1. Provisional Non-Statutory OTDP Rejection R1 of Claims 23–33
Issue 1
The issue before us is whether the Examiner erred in provisionally
rejecting claims 23–33 on the ground of non-statutory OTDP.
Appellants allege, “[t]hough the rejections for non-statutory
obviousness type double patenting had been only provisional in nature,
Appellants have since filed a terminal disclaimer rendering said rejections
moot.” App. Br. 4. In response, the Examiner “[a]cknowledg[es] . . .
Appellant’s Terminal Disclaimer filed on October 13, 2017.” Ans. 4.
We note the record before us does not show that Appellants filed a
Terminal Disclaimer for this case, nor that a Terminal Disclaimer was
entered by the Examiner.4 Moreover, the Examiner has not officially
withdrawn provisional OTDP Rejection R1 of claims 23–33 in the Answer
or in any other communication of record.
Based on the lack of any evidence of record concerning a Terminal
Disclaimer in this case, we pro forma affirm the Examiner’s provisional
Rejection R1 of claims 23–33.
2. § 101 Rejection R2 of Claims 23–33
Issue 2
Appellants argue (App. Br. 4–16; Reply Br. 2–5) the Examiner’s
rejection of claim 23 under 35 U.S.C. § 101 as being directed to patent-

4 We note that a Terminal Disclaimer was filed and entered in related case
Appeal No. 2018-002718 of co-pending Application Ser. No. 14/227,794.
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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 23 patent-ineligible under 35
U.S.C. § 101?
Principles of Law
A. 35 U.S.C. § 101
“Eligibility under 35 U.S.C. § 101 is a question of law, based on
underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166
(Fed. Cir. 2018).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.5
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) (brackets 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

5 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 35 U.S.C. § 101. MPEP § 2106.
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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))).
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
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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.”).
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.”).
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
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 recently published revised guidance in the Federal Register
concerning the application of 35 U.S.C. § 101. 2019 Revised Patent Subject
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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).
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.
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.

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)”).
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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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).
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

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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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.
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

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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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
elements that render the claim patent eligible even though a judicial
exception is recited in a separate claim element.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

11 See, e.g., Diehr, 450 U.S. at 187.
12 See, e.g., Amdocs (Israel), 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).
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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
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
III.B.14
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the

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).
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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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). . . .
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) 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
(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be
present.
Revised Guidance, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
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exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements does 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 23, as a computer program product (manufacture) 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 claim 23 is directed to:
a mental process that . . . can be performed in the human mind,
or mathematical algorithm, akin to Electric [P]ower [G]roup
(EPG); and . . . FairWarning . . . receiving a set of candidate
rules and determining and/or analyzing each candidate rule if
condition is satisfied, generating an agenda, and applying the
rules, which is an idea of itself, and an abstract idea.
Final Act. 16.
We conclude claim 23 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 23 recites an abstract idea based upon the Revised Guidance.
Claim 23 recites, in pertinent part, “[a] computer program product for
rules processing with mixed integer programming (MIP) constraints for
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integrated business rule management system (BRMS) and MIP technology
application deployment in a computer,” that includes the steps of:
(1) “[R]eceiving a set of candidate rules each having a
left hand side and a right hand side.”
(2) “[D]etermining . . . whether a no-failure condition is
met, with the no-failure condition being considered as met
when a mixed integer programming (MIP) constraint of a left
hand side of a corresponding enveloping rule for the candidate
rule did not fail.”
(3) “[R]emoving . . . any of the rules in the candidate set
for which a no-failure condition is not met, but selecting . . . a
conflict set of selected rules such that each selected rule has
been determined to meet the no-failure condition.”
(4) “[G]enerating an agenda . . . for the conflict set of
selected rules that ranks the conflict set of the selected rules.”
(5) “[A]pplying the rules in the conflict set in agenda
order to a working memory of a rules engine.”
Claims App’x.
The Specification provides context as to what the claimed invention is
directed to. In this case, the Specification discloses that the invention
“relates to business rules management and more particularly to integrated
business rules and constraints.” Spec. ¶ 2.
Appellants’ Abstract further describes the invention as:
Embodiments of the present invention provide a method,
system and computer program product for an integrated
business rules management system (BRMS) and mixed integer
programming (MIP) technology application deployment. In an
embodiment of the invention, a method of rules processing with
MIP constraints can include selecting candidate rules from
amongst a set of rules in a rules engine executing in memory of
a computer and reducing the candidate rules to rules in a
conflict set according to constraints specified in the candidate
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rules. The method also can include conflict resolving the rules
in the conflict set and generating an agenda for the rules of the
conflict set. Finally, the method can include adding constraints
specified in the rules of the conflict set to working memory of
the rules engine and applying the rules in the conflict set in
agenda order to the working memory.
Spec. 22.
Similar to the Examiner, we also determine that claim 23 recites a
mental process that may also be performed by pen and paper. This type of
activity, i.e., evaluating, processing, and manipulating data, as recited in
limitations (2) through (4), for example, are actions that would be carried out
by any scheme to manage business rules with constraints, and includes
longstanding conduct that existed well before the advent of computers and
the Internet, and could be carried out by a human 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.”).15

15 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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With respect to this step of the analysis, Appellants argue:
[I]n light of McRO . . . an “improvement in computer-related
technology” is not limited to improvements in the operation of
a computer or a computer network per se, but may also be
claimed as a set of “rules” (basically mathematical
relationships) that improve computer related technology by
allowing computer performance of a function not previously
performable by a computer.
App. Br. 7.
Indeed, it is Appellants’ position that the entirety of
Appellants’ claim language in consideration of the teachings of
paragraphs [0021] through [0023] for the specification go
beyond the mere collection of information and the collection
and manipulation of information as evident from Appellants’
claim language which is limited by particular content that does
in fact change the character of the collected information. Thus,
as can be seen, when considering the specific claim elements of
independent claim 23 as a whole in light of the teachings of the
specification, and the legal holding of Enfish, McRO,
FairWarning and Electric Power Group, it is clear that
Appellants’ claims are directed to a process driven improvement
to computer-related technology by allowing computer
performance of a function not previously performable by a
computer.
App. Br. 10-11 (emphasis in original).
In response to Appellants’ allegation of novel computer functionality,
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
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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”).
Further, in Enfish, our reviewing court held claims directed to a self-
referential logical model for a computer database patent-eligible under step
one of Alice. Enfish, 822 F.3d at 1330. The disclosed technique enabled
faster searching and more effective storage of data than previous methods.
Id. at 1333. The court found the claims directed to “a specific improvement
to the way computers operate, embodied in the self-referential table” (id.
at 1336), and explained that the claims are “not simply directed to any form
of storing tabular data, but instead are specifically directed to a self-
referential table for a computer database” that functions differently than
conventional databases. Id. at 1337. Here, we find no similarity between
Appellants’ claimed business rules management and a specific improvement
to the way computers operate, embodied in the self-referential table in
Enfish.
Still further, in McRO, the claims were not held to be abstract because
they recited a “specific . . . improvement in computer animation” using
“unconventional rules that relate[d] sub-sequences of phonemes, timings,
and morph weight sets.” McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1302–03, 1307–08, 1314–15 (Fed. Cir. 2016). In McRO,
“the incorporation of the claimed rules, not the use of the computer,”
improved an existing technological process. Id. at 1314. The claims in
McRO recited a “specific . . . improvement in computer animation” using
“unconventional rules that relate[d] sub-sequences of phonemes, timings,
and morph weight sets.” McRO, 837 F.3d at 1302–03, 1307–08, 1314–15.
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We note Appellants have not identified with particularity what the
alleged “function not previously performable by a computer” is. Therefore,
we find Appellants have not specified how claim 23 improves an existing
technological process. See Alice, 134 S. Ct. at 2358 (explaining that “the
claims in Diehr were patent eligible because they improved an existing
technological process”). In addition, Appellants do not direct us to any
evidence that the claimed “determining,” “removing,” and “generating”
steps correspond to unconventional rules.
Additionally, when claimed in a certain way, the collection of
information and analysis of information (e.g., recognizing certain data
within the dataset) are also abstract ideas. Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016); FairWarning IP, LLC v.
Iatric Sys., 839 F.3d 1089, 1093 (Fed. Cir. 2016) (collecting information and
“analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] essentially mental processes
within the abstract-idea category”). Similarly here, Appellants’ claim 23 is
directed to recognizing certain data within the dataset, and thus recites an
abstract idea.
Appellants further contend:
Appellants have claimed an invention that reflects a particular
solution to a problem or a particular way to achieve a desired
outcome defined by the claimed invention, as opposed to
merely claiming the idea of a solution or outcome.” In
particular, claim 23 specifically requires that machine logic
determines whether a no-failure condition is met and then
removes from a set of candidate rules, any of the rules in the
candidate set for which a no-failure condition is not met, but
selects, from the set of candidate rules, a conflict set of selected
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rules such that each selected rule has been determined to meet
the no-failure condition. On its face, the human mind cannot
perform such method steps given that the claim language
requires machine logic to have done so.
Reply Br. 3.
In response, we note that, under the broadest reasonable interpretation
standard,16 we conclude limitations (2) through (4) recite steps that would
ordinarily occur when managing business rules and constraints. See Final
Act. 3. For example, determining whether a rule belongs to a set of rules is
an operation that generally occurs when managing a set of rules, as are
removing and/or ranking rules in a set of rules, whether initiated person-to-
person, on paper, or using a computer.
Thus, under Step 2A(i), we agree with the Examiner that claim 23’s
computer program product for rules processing recites a mental process at
least in steps (2) through (4). We conclude claim 23, under our Revised
Guidance, recites a judicial exception of a mental process, i.e., as concepts
performed in the human mind (including an observation, evaluation,
judgment, and opinion), and thus is an abstract idea.

16 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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Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “practical application” Step 2A(ii) in
which we determine whether the recited judicial exception is integrated into
a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.
We find each of the limitations (2) through (4) of claim 23 recite
abstract ideas as identified in Step 2A(i), supra, and none of the limitations
integrate the judicial exception of a mental process 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.
As to the specific limitations, we find limitation (1) recites
insignificant data gathering. See MPEP § 2106.05(g). Data gathering, as
performed by the steps or function in Appellants’ 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. Kappas,
561 U.S. 593 (2010).
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We also find limitation (5) recites insignificant post solution
activity.17 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). On this record, we are of the view that Appellants’ claims do
not operate the recited generic computer components in an unconventional
manner to achieve an improvement in computer functionality. See MPEP
§ 2106.05(a).
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, Appellants have not
shown an improvement or practical application under the guidance of
Manual of Patent Examining Procedure 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 do
Appellants 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.

17 Aside from the recited computer memory aspects of the claim, we also
note the “applying” step can be carried out by a human in the mind or by use
of pen and paper. See CyberSource, 654 F.3d at 1375.
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Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, 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
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., 830 F.3d at 1353).
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
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 idea18; mere instructions to implement an

18 Alice, 573 U.S. at 221–23.
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abstract idea on a computer19; 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.20
Evaluating representative claim 23 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
managing business rules with constraints into a patent-eligible application of
that abstract idea.
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 “machine logic,”
and “business rules management system (BRMS)” in computer program
product claim 23; and “a computer with at least one processor and memory,”
“rules engine in the BRMS executing in the computer,” “a mixed integer
programming (MIP) optimization engine executing in the computer and
coupled to the rules engine,” and “a business rules management system
(BRMS)” in system claim 29, the Specification discloses that the “computer
program instructions may be provided to a processor of a general purpose
computer.” Spec. ¶ 34 (emphasis added); see also Spec. ¶ 30 (“In the

19 Alice, 573 U.S. at 221, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer (citing Mayo, 566 U.S.
at 84–85).
20 Alice, 573 U.S. at 225, e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
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context of this document, a computer readable storage medium may be any
tangible medium that can contain, or store a program for use by or in
connection with an instruction execution system, apparatus, or device.”).
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 Appellants’
Specification, as quoted above.21
With respect to this step of the analysis, Appellants contend:
Appellants’ claims specify with particularity exactly how the
abstract concept of rules processing with MIP constraints is
achieved without foreclosing all possible methodologies for
achieving the abstract concept of rules processing with MIP
constraints . . . .
[I]n Intellectual Ventures the Federal Circuit explained that
patent eligibility existed where the patent at issue provided an
Internet-based solution to solve a problem unique to the Internet
that (1) did not foreclose other ways of solving the problem,
and (2) recited a specific series of steps that resulted in a
departure from the routine and conventional sequence of events
. . . .
Here, Appellants’ claims . . . are restricted as to how the
innovative concept of “rules processing with MIP constraints”
is achieved without foreclosing other ways of solving the
problem at hand while reciting a specific series of steps that
result in a departure from the routine and conventional
sequence of events.

21 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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App. Br. 14–16.
In response, we note the lack of pre-emption is not a standalone test,
i.e., absence of pre-emption does not imply patentable subject matter. Even
if “the abstract concept of rules processing with MIP constraints is achieved
without foreclosing all possible methodologies for achieving the abstract
concept of rules processing with MIP constraints” as argued by Appellants,
lack of preemption does not make a claim any less abstract. See Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also See Parker v. Flook, 437 U.S. 584, 589 (1978).
Further, in Intellectual Ventures I, the Federal Circuit held:
The patent at issue in DDR provided an Internet-based solution
to solve a problem unique to the Internet that (1) did not
foreclose other ways of solving the problem, and (2) recited a
specific series of steps that resulted in a departure from the
routine and conventional sequence of events after the click of a
hyperlink advertisement . . . . The patent claims here do not
address problems unique to the Internet, so DDR has no
applicability.
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1371 (Fed. Cir. 2015) (citation omitted, emphasis added).
We find Appellants’ reliance on Intellectual Ventures misplaced as the
Appellants’ claims do not address problems unique to the Internet. In DDR,
the claims at issue involved, inter alia, “web pages displays [with] at least one
active link associated with a commerce object associated with a buying
opportunity of a selected one of a plurality of merchants” (claim 1 of
US 7,818,399). The Federal Circuit found the claims in DDR to be patent-
eligible under step one of the Alice test because “the claimed solution is
necessarily rooted in computer technology in order to overcome a problem
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specifically arising in the realm of computer networks.” DDR Holdings, 773
F.3d at 1257. Specifically, the Federal Circuit found the claims addressed the
“challenge of retaining control over the attention of the customer in the
context of the Internet.” Id. at 1258. We find the rejected claims are dissimilar
to DDR’s web page with an active link, and the Specification does not support
the view that the computer related claim elements are unconventional. See
Spec. ¶ 34.
Additionally, the Manual of Patent Examining Procedure, based upon
our precedential guidance, provides additional considerations with respect to
analysis of the well-understood, routine, and conventional nature of the
claimed 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)
(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
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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 computer program product that includes “a non-transitory
computer readable storage medium having computer readable program code
embodied therewith,” “machine logic,” and “a business rules management
system (BRMS)” (claim 23) as argued by Appellants, and similarly for
system claim 29, 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.”).
We conclude the claims fail the Step 2B analysis because claim 23, 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, because the claims fail under both the Step 2A and Step 2B
analyses, we sustain the Examiner’s 35 U.S.C. § 101 Rejection R2 of
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independent claims 23 and 29, and grouped claims 24–28 and 30–33, not
argued separately, and which fall therewith. See Claim Grouping, supra.
3. § 112(a) Written Description Rejection R3 of Claims 23–33
Issue 3
Appellants argue (App. Br. 16–21; Reply Br. 6–7) the Examiner’s
rejection of claim 23 under 35 U.S.C. § 112(a) as lacking written description
support is in error. These contentions present us with the following issue:
Did the Examiner err in finding the limitation of “determining, for
each candidate rule, by machine logic, whether a no-failure condition is met,
with the no-failure condition being considered as met when a mixed integer
programming (MIP) constraint of a left hand side of a corresponding
enveloping rule for the candidate rule did not fail” lacks written description
support, as recited in claim 23?
Analysis
Appellants contend:
[P]aragraph [0017] of the original specification is clear that “the
constraint can be tested and in response to a failure of a
constraint when tested, the enveloping rule can be removed
from the candidate set of applicable rules.” This is on its face, a
“no-failure condition”.
App. Br. 21.
Appellants additionally state:
The claimed method also includes the determination, for each
candidate rule, by machine logic, of whether a no-failure
condition is met, with the no-failure condition being considered
as met when a mixed integer programming (MIP) constraint of
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a left hand side of a corresponding enveloping rule for the
candidate rule did not fail.
App. Br. 2 (“Summary of Claimed Subject Matter”) (citing Spec. ¶ 25).
We find that the Appellants’ Specification provides written
description support for the contested claim limitation as follows:
[0026] In more particular illustration of the selection of the
rules, Figure 4 is a flow chart illustrating a process for rules
selection . . . in block 405, a set of rules can be retrieved and in
block 410 a first rule in the set can be selected for processing.
In decision block 415, it can be determined whether or not all
decisions implicated by the rule are bound by a left hand side
constraint of the rule. If so, in block 420 the enveloped
constraint can be tested and in decision block 425, if the
constraint fails in block 430 the enveloping rule can be
removed from the set of selected rules.
Spec. ¶ 26 (emphasis added).
Therefore, based upon the findings above, on this record, we are
persuaded of error in the Examiner’s finding that the disputed limitation
lacks adequate written description support.
Accordingly, we reverse the Examiner’s written description Rejection
R3 of claim 23 and grouped claims 24–33, which stand therewith. See
Claim Grouping, supra.
4. § 103 Rejection R4 of Claims 23–33
Issue 4
Appellants argue (App. Br. 22–25; Reply Br. 7–9) the Examiner’s
rejection of claim 23 under 35 U.S.C. § 103(a) as being obvious over the
combination of Proctor and Belcsak is in error. These contentions present us
with the following issue:
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Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] computer program product for rules processing with mixed
integer programming (MIP) constraints for integrated business rule
management system (BRMS) and MIP technology application deployment
in a computer, the computer program product” including “a non-transitory
computer readable storage medium having computer readable program code
embodied therewith,” that includes , inter alia, “computer readable program
code” “for removing, by machine logic from the set of candidate rules, any
of the rules in the candidate set for which a no-failure condition is not met,
but selecting, by machine logic from the set of candidate rules, a conflict set
of selected rules such that each selected rule has been determined to meet the
no-failure condition,” as recited in claim 23?
Analysis
Appellants contend:
[P]aragraph [0026] [of Proctor] teaches only the meeting of
LHS conditions fairly mapped by Examiner to the claimed
determination of a “no-failure condition” and also the
“activation” of a corresponding rule and the placement of the
rule in an “agenda of a rule engine” if the LHS conditions of the
rule are met and determined to be true, while paragraph [0067]
[of Proctor] provides a specific instance of the processing of the
LHS conditions and the placement of a corresponding rule into
a “ruleflow group”. However, lacking in both paragraphs, is
the claimed notion of removing from a candidate set of rules
any rule for which an enveloped constraint does not have a
“no-failure” condition. In fact, the entirety of both
paragraphs neglects to address the scenario where a LHS
condition of a rule is NOT satisfied or found NOT to be
true.
App. Br. 24–25.
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Appellants further contend:
[P]aragraph [0031] of Proctor refers to the matching by a rules
engine against facts which may be removed from working
memory-so called retraction expanded upon in paragraph
[0048] as when the rule engine elects “not to track or match a
fact previously asserted into a working memory”. So much is a
far cry from the claimed [limitation].
Reply Br. 9.
We agree with the Examiner’s finding that Proctor discloses
removing, by machine logic from the set of candidate rules, any
of the rules in the candidate set for which a no-failure condition
is not met, but selecting, by machine logic from the set of
candidate rules, a conflict set of selected rules such that each
selected rule has been determined to meet the no-failure
condition,
as recited in claim 23. (Ans. 14–16).
We agree with the Examiner because, according to Proctor, “FIG. 4
illustrates . . . a process to define a ruleflow.” Proctor: ¶ 62. Further, “a
ruleflow . . . refers to the order in which a number of rules and/or rule sets
should be executed by a rule engine and conditions, if any, under which the
rules should be executed.” Proctor: ¶ 57. “FIG. 5 illustrates one
embodiment of a process to load a ruleflow model to a rule engine.”
Proctor: ¶ 64. “FIGS. 6A and 6B show one embodiment of a process to
execute rules based on a ruleflow using a rule engine.” Proctor: ¶ 66. “If
the LHS conditions of one of the rules are satisfied, then processing logic
places this rule into a corresponding ruleflow-group.” Proctor: ¶ 67. “FIG.
6B, processing logic places all of the rules in the ruleflow-group into an
agenda of the rule engine . . . [and] processing logic uses the rule engine to
execute the rules in the agenda.” Proctor: ¶ 68.
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Based on these teachings and suggestions, we find the ruleflow
includes a set of rules, and if a rule’s LHS condition is not satisfied, that rule
is effectively removed from the list of rules to be executed by virtue of not
being placed into the ruleflow-group. Therefore, we find that Proctor
teaches or at least suggests the “removing” limitation of claim 23.
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 limitation of claim 23, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness Rejection R4 of independent claim 23, and
grouped claims 24–33, which fall therewith. See Claim Grouping, supra.22
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2–9) 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 Appellants have not shown.

22 Appellants’ Appeal and Reply Briefs are both silent regarding Rejection
R4 of claims 24–33 under 35 U.S.C. § 103(a).
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CONCLUSIONS
(1) We pro forma affirm provisional non-statutory OTDP Rejection
R1 of claims 23–33.
(2) Under our Revised Guidance, governed by relevant case law,
claims 23–33 are patent-ineligible under 35 U.S.C. § 101, and we sustain
Rejection R2.
(3) The Examiner erred with respect to written description
Rejection R3 of claims 23–33 under 35 U.S.C. § 112(a), and we do not
sustain the rejection.
(4) The Examiner did not err with respect to obviousness Rejection
R4 of claims 23–33 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we sustain the rejection.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. § 41.50(a)(1).
DECISION
We affirm the Examiner’s decision rejecting claims 23–33.
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