William A. Brown et al.

Patent Trials and Appeals Board

Jan 30, 2020

12326354 - (D) (P.T.A.B. Jan. 30, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/326,354 12/02/2008 William A. Brown END920080134US1 3239
76933 7590 01/30/2020
IBM (END-KLS)
c/o Kennedy Lenart Spraggins LLP
301 Congress Avenue
Suite 1350
AUSTIN, TX 78701
EXAMINER
SHANKER, JULIE MEYERS
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
01/30/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eofficeaction@appcoll.com
kate@klspatents.com
office@klspatents.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM A. BROWN, KERRIE L. HOLLEY,
GARRISON A. MOORE, and WILLIAM J. TEGAN
____________

Appeal 2018-004604
Application 12/326,354
Technology Center 3600
____________

Before, MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1, 4–8, and 11–14. We have jurisdiction under 35
U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as International
Business Machines Corporation (“IBM”) (Appeal Br. 2).
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THE INVENTION
Appellant claims a methods and systems for governing architecture of
a Service Oriented Architecture (“SOA”) (Spec. 1, Title).
Claim 1 is representative of the subject matter on appeal.
1. A method of governing architecture of a Service Oriented
Architecture ('SOA'), the method comprising:
identifying, by one or more modules of automated computing
machinery, business requirements for the SOA;
establishing, by one or more modules of automated computing
machinery, an architecture management framework;
creating, by one or more modules of automated computing
machinery, an SOA reference architecture in dependence upon
the architecture management framework and the identified
business requirements, the SOA reference architecture
comprising a definition of an enterprise-wide, high-level
architecture model describing division of functionality and
dataflow among components of the high-level architecture
model, the definition mapped onto software and hardware
components that implement the functionality and dataflow
among the components of the high-level architecture model;
determining that the SOA reference architecture does not
comply with predetermined architectural policies for the SOA;
and
refining the SOA reference architecture based on the
determination that the SOA reference architecture does not
comply with predetermined architectural policies for the SOA,
wherein refining the SOA reference architecture comprises
creating again the SOA reference architecture taking into
consideration non-compliant aspects of a previously created
SOA reference architecture.

THE REJECTIONS
Claims 1, 4–8, and 11–14 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
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Claims 1, 4–8, and 11–14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Marks (US 2006/0235733, published Oct. 19, 2006)
in view of Mohamad Afshar, “SOA Governance: Framework and Best
Practices, an Oracle White Paper” (May 2007) (hereinafter “Oracle”).

ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1, 4–8, and 11–14 under 35
U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of those
patent-ineligible concepts. If so, . . . then ask, “[w]hat else is there
in the claims before us?” To answer that question, . . . consider
the elements of each 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. [The Court] described step two of this analysis as a
search for an “‘inventive concept’”—i.e., an element or
combination of elements that is “sufficient to ensure that the
patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.”
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73
(2012)) (citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
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as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36.
In so doing, we apply a “directed to” two-prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, pp. 50–57 (Jan. 7, 2019) (“Revised Guidance”).
The Examiner determines that the claims are directed to comparing of
information and the use of rules to determine whether the SOA reference
architecture needs to be refined (Final Act. 3–4). The Examiner finds the
claims do not recite an improvement to another technology or technical
field, an improvement to the functioning of the computer itself, or provide
meaningful limitations beyond generally linking an abstract idea to a
particular technological environment (a general-purpose computer). The
Examiner finds that the claimed computing components are recited at a high
level of generality, and they are recited as simply carrying out the abstract
idea (e.g., executing computer code to perform identifying, establishing,
creating, determining ,and refining) (Id. at 4).
The Specification discloses that the claimed method is a method for
governing architecture of the Service Oriented Architecture (“SOA”). The
architecture of an SOA refers to the manner in which resources of the SOA
are organized and integrated. The claimed invention first identifies business
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requirements for the SOA. These requirements include accessibility,
functionality, interaction, and information, in other words this is data about
the requirements of the particular business. After this step, an architecture
management framework is established. An architecture management
framework is typically represented in documents and diagrams defining how
the enterprise architecture for the SOA and its important component parts
will be implemented, managed and updated in response to changes to
business needs and available technologies (Spec. 29). The method of the
invention is depicted in Figure 10. The method steps as recited in claim 1
and disclosed in the Specification include identifying business requirements
for the SOA (evaluation); establishing an architecture management
framework (judgment); creating an SOA reference architecture (judgment);
and determining the SOA reference architecture does not comply with
predetermined architectural policies for SOA (judgement) (Spec. 28–30).
As such, we agree with the Examiner’s determination that the claims
recite comparing information and using rules to determine whether the SOA
reference architecture needs to be refined. This is a method that involves
evaluation, judgment, and opinion and is thus a mental process. Guidance
52. These steps constitute “analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category.” Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims
directed to certain arrangements involving contractual relations are directed
to abstract ideas). Thus, we find that the claims recite an abstract idea of
methods of a mental process.
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Turning to the second prong of the “directed to test,” claim 1 requires
a “one or more modules of automated computing machinery.” These
recitations do not impose “a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception.” Revised Guidance, 84 Fed. Reg. at 18. We find no
indication in the Specification, nor does Appellant direct us to any
indication, that the operations recited in independent claim 1 invoke any
inventive programming, require any specialized computer hardware or other
inventive computer components, i.e., a particular machine, or that the
claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the revised Guidance. See Revised Guidance, 84
Fed. Reg. at 55.
In this regard, the recitation does not affect an improvement in the
functioning of an automated computing machinery or computer or other
technology, does not recite a particular machine or manufacture that is
integral to the claims, and does not transform or reduce a particular article to
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a different state or thing. Id. Thus, claim1 is directed to a judicial exception
with no integration into a practical application i.e. an abstract idea.
Turning to the second step of the Alice analysis, because we find that
the claims are directed to an abstract ideas, the claims must include an
“inventive concept” in order to be patent-eligible, i.e., there must be an
element or combination of elements that is sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (alteration in original) (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
The introduction of a computer or automated computing machinery
into the claims does not alter the analysis at Alice step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of “additional featur[e]” that provides any
“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
Instead, “the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. They do not.
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Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
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generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
The claims do not, for example, purport to improve the functioning of
the computer itself. As we stated above, the claims do not affect an
improvement in any other technology or technical field. Thus, the claims at
issue amount to nothing significantly more than instructions to apply the
abstract idea of information access using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 226.
We have reviewed all the arguments (Appeal Br. 6-18) Appellant has
submitted concerning the patent eligibility of the claims before us that stand
rejected under 35 U.S.C. § 101. We find that our analysis above
substantially covers the substance of all the arguments, which have been
made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the Examiner fails to provide any clear
identification that can be taken as the abstract idea (Appeal Br. 8). As
discussed above, the Examiner clearly identified the abstract idea to be
“comparing of information and the use of rules to determine whether the
SOA reference architecture needs to be refined.” (Final Act. 4).
We do not agree with Appellant that there is no comparing of
information or rules pointed out for the claims. (Appeal Br. 10). Claim 1,
for example discloses creating a SOA reference architecture and then
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determining that the SOA reference architecture does not comply with
predetermined architectural policies. This step clearly involves determining
(comparing) if the created SOA complies with predetermined architectural
policies (rules).
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claims are not abstract because the claims do
not recite a fundamental building block of computer science. (Appeal Br.
15). Specifically, Appellant argues that the prevailing case law establishes
that a patent claims is ineligible only when the claim directly recites a
fundamental building block and preempts all or at least a broad range of
implementation of the idea. (Appeal Br. 14). Appellant reasons that since
courts in several cases such as Alice and Mayo determined that the claims
related to a fundamental economic practice, which is a fundamental building
block of business and commerce, such a determination is necessary to
establish that a claim is directed to an abstract idea. However, while a
fundamental economic practice is one of the categories of judicial
exceptions established by the courts, the courts have also determined that
mathematical concepts, certain methods of organizing human activity in
addition to a fundamental economic practice (managing personal behavior
such as social activity, teaching and following rules or interactions) are
judicial exceptions. In addition, courts have determined that mental
processes are also judicial exceptions. See Guidance 84 Fed. Reg. at 52.
The Examiner in the present case, determines that the claims are directed to
a mental process, not a fundamental economic practice or a fundamental
building block of computer science.
In regard to the preemption argument, “[w]hile preemption may signal
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patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015), cert, denied,
136 S. Ct. 701, 193 (2015) (“[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.”). And, “[w]here a patent's
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns are fully
addressed and made moot.” Ariosa, 788 F.3d at 1379.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claims recite significantly more than any
abstract idea because the claims are necessarily based in computer
technology in order to overcome problems specifically arising in the realm
of SOA governance. Appellant concludes that the invention improves the
functionality of the underlying computer hardware (Appeal Br. 18). In
making this argument, Appellant argues that the instant claims are similar to
the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014) (Appeal Br. 17).
In DDR Holdings, the Court evaluated the eligibility of claims
“address[ing] the problem of retaining website visitors that, if adhering to
the routine, conventional functioning of Internet hyperlink protocol,
would be instantly transported away from a host’s website after
‘clicking’ on an advertisement and activating a hyperlink.” DDR, 773 F.3d
at 1257. There, the Court found that the claims were patent eligible because
they transformed the manner in which a hyperlink typically functions to
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resolve a problem that had no “pre-Internet analog.” Id. at 1258. The
Court cautioned, however, “that not all claims purporting to address
Internet-centric challenges are eligible for patent.” Id. For example, in
DDR Holdings the Court distinguished the patent-eligible claims at issue
from claims found patent-ineligible in Ultramercial. See DDR,773 at
1258–59 (citing Ultramercial, 772 F.3d 7 0 9 , 715–16 (Fed. Cir. 2014)).
As noted there, the Ultramercial claims were “directed to a specific
method of advertising and content distribution that was previously
unknown and never employed on the Internet before.” Id. at 1258
(quoting Ultramercial, 772 F.3d at 715–16). Nevertheless, those claims
were patent ineligible because they “merely recite[d] the abstract idea of
‘offering media content in exchange for viewing an advertisement,’ along
with ‘routine additional steps such as updating an activity log, requiring a
request from the consumer to view the ad, restrictions on public access, and
use of the Internet.’” Id.
Appellant’s asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website;” “restricting general public access to said
media product;” “receiving from the consumer a request to view [a]
sponsor message;” and “if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query.” Ultramercial, 772 F.3d at 712. Similarly, Appellant’s asserted
claims recite receiving, analyzing, modifying, and transmitting data. This
is precisely the type of Internet activity found ineligible in Ultramercial.
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In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 101. We will also sustain the rejection as it is
directed to the remaining claims because the Appellant has not argued the
separate eligibility of these claims.
35 U.S.C. § 103(a) REJECTION
We will not sustain this rejection because we agree with Appellant
that the prior art does not disclose “determining that the SOA reference
architecture does not comply with predetermined architectural policies for
the SOA,” and “refining the SOA reference architecture based on the
determination.” (Appeal Br. 4). The Examiner relies on Oracle pages 6–7,
page 18, step 3 and page 20, step 6 for disclosing this subject matter. (Final
Act. 12).
We find that pages 6–7 of Oracle states that building out your SOA to
enable change is best done using an architectural approach that sets up a
minimal set of constraints. As part of a SOA journey, certain policies should
be considered and that failure to enact policies relating to enterprise
architecture will result in duplicative effort. As such, this section of Oracle
discloses that policies should be established for the SOA but does not
discloses a step of determining whether an SOA policy complies with the
policies and refining the SOA are a result of this determination.
We find that page 18, step 3 of Oracle discloses that once you know
what kinds of policies you need, you need to define the success factors and
key performance indicators that will let you know you have achieved your
goals and objectives. This portion of Oracle does not disclose a step of
determining that the SOA does not comply with the policy and refining the
SOA based on the determination.
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We find that Oracle at page 20, step 6 discloses that periodically, the
policies need to be re-evaluated and refined but does not disclose the step of
determining that the SOA does not comply with the policy and refining the
SOA based on the determination.
In view of the foregoing, we will not sustain this rejection as it is
directed to claim 1. We will also not sustain the rejection as it is directed to
the remaining claims because each of the remaining claims requires the
subject matter we have found lacking in Oracle.

CONCLUSIONS OF LAW
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–8, 11–
14
101 Eligibility 1, 4–8, 11–
14

1, 4–8, 11–
14
103(a) Marks, Oracle 1, 4–8, 11–
14
Overall
Outcome
1, 4–8, 11–
14

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