Ralf Werner. Munkes et al.

Patent Trials and Appeals Board

Nov 4, 2019

13715149 - (D) (P.T.A.B. Nov. 4, 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.
13/715,149 12/14/2012 Ralf Werner Munkes 5135-88 4379
23117 7590 11/04/2019
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
NGUYEN, NGA B
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
11/04/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RALF WERNER MUNKES, MARKUS WERNER,
and STEFAN RUSCHEL
____________

Appeal 2018-005832
Application 13/715,1491
Technology Center 3600
____________

Before DAVID M. KOHUT, ERIC B. CHEN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1, 3, 5–10, 12–16, 18, 19, and 21–
32.2 We have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We reverse.

1 According to Appellant, the real party in interest is “SOFTWARE AG.”
App. Br. 3.
2 Claims 2, 4, 11, 17, and 20 are canceled. Amendment filed February 24,
2017 (listing of claims).
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STATEMENT OF THE CASE
Appellant’s invention relates “to finding paths between source and
target elements in a model” and “the ability to filter out paths, objects,
and/or other elements that are not of interest.” Spec. ¶ 1. Claim 1 is
exemplary and reproduced below.
1. A path finding method performed by an information
processing system comprising at least one processor, the path
finding method being executed on a computer-represented
model comprising a plurality of computer-represented objects
including concrete level objects and methodic-level objects, the
computer-represented model being defined in accordance with a
modeling convention and including a plurality of layers, the
plurality of layers including a first layer describing what kind of
computer-represented objects and/or connections are usable in
the computer-represented model, the second layer defining the
methodic-level objects, and a third layer defining the
concrete-level objects, the path finding method facilitating data
mining of information relating to the objects and/or
relationships between objects represented by the model, the
method comprising:
receiving, from a user and via a user interface, input specifying
a source object, a target object, a maximum step size, and at
least one stopover item that must be present between the
specified source object and the specified target object;
developing a net representing at least all methodic-level objects
in the model between the source and target objects and
concrete-level objects in the model between the source and
target objects, each of the methodic-level objects being a step of
at least one path between the source and target objects and each
of the concrete-level objects being a step of at least one path
between the source and target objects, and all relationships
between the concrete-level objects and the methodic-level
objects in the model [represented] by connections between the
concrete-level objects and the methodic-level objects, wherein
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each said concrete-level object is an instance of an associated
methodic-level object;
compiling a list of paths, through the net, from the source object
to the target object, each said path having a path length
associated therewith, each path including the one or more steps
corresponding to the methodic-level objects, the one or more
steps corresponding to the concrete-level objects, the one or
more specified stopover items that must be present between the
specified source object and the specified target, and the path
length of each path in the list determined by the steps
corresponding to the methodic-level objects and the
concrete-level objects being less than the specified maximum
step size;
following said compiling of the list of paths, displaying on a
display the compiled list of paths to the user in text-based
and/or graphical form and a filter list indicating model types,
object types, attributes of objects, and/or relationship types in
the developed net to enable the data mining without requiring
the user to have detailed knowledge of the model and/or
without requiring the user to input search queries using a
predetermined technical scripting format, to provide consistent
and repeatable results within a single modeling environment
used to model the computer-represented model;
receiving, from the user via the user interface, input specifying
one or more user-specified filters from the filter list;
excluding, from the list of paths and in connection with the at
least one processor, individual ones of said paths that fail to
meet the one or more user-specified filters; and
following said excluding and without the user having to make
an adaptation to the computer-represented model or the
modeling convention, updating the displayed list of paths to the
user in text-based and/or graphical form to take into account
updates thereto resulting from the excluding and further
facilitate the data mining without requiring the user to have
detailed knowledge of the model and/or without requiring the
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user to input search queries using a predetermined technical
scripting format, to generate updated consistent and repeatable
results within the single modeling environment used to model
the computer-represented model.
REJECTION
Claims 1, 3, 5–10, 12–16, 18, 19, and 21–32 stand rejected under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
Non-Final 2–4.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
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. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014) (citation omitted).
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. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice,
573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent-ineligible,
include certain methods of organizing human activity, such as fundamental
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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” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “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 that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim ”seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent protection.”
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
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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. (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.
PTO GUIDANCE
The PTO recently published revised guidance on the application of
§ 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019).3 Under that 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); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)
(9th ed. 2018).
84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and
(2) does not integrate that exception into a practical application, do we then

3 The USPTO also recently published updated revised guidance on the
application of § 101 which provides additional examples and explanation
and responds to five major themes from comments solicited from the public.
USPTO’s October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg.
55942 (October 18, 2019). The update focuses on clarifying patent
examiner practice. Id.
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conclude the claim is directed to a judicial exception (id. at 54) and 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.
Id. at 56.
ANALYSIS
For this rejection, Appellant’s arguments, the Examiner’s responses,
and the Non-Final Action each address all claims as a group and only
claim 1 with particularity. App. Br. 14–29; Ans. 2–13; Non-Final 2–6. We
therefore decide the appeal of this rejection on the basis of claim 1.
Step 2A(1): The Examiner fails to show the claims recite judicial exceptions.
Appellant argues that the Examiner does not explain why the claim
features identified as constituting judicial exceptions are in fact judicial
exceptions. App. Br. 14–18; Reply 2–6. As to the alleged failure of the
Examiner to meaningfully identify claim features as judicial exceptions,
Appellant contends:
The Office Action[] . . . moves . . . through iterative levels of
abstraction, arriving at a fragment of a thought that bears no
resemblance to the . . . claims . . . or . . . relied-upon court cases.
That is, [after] merely reproducing some (but not all) language
of claim 1, the Office Action abstracts that limited text to nine
(9) words[—]“[r]eceiving, developing, compiling, displaying,
receiving, excluding, and updating data”[— that are] not a bona
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fide statement of what the claims . . . [are] “directed to” under a
proper Alice part 1 analysis. . . . [T]he Office Action . . . farther
abstracts the claim language [to] . . . “organizing human activity”
and “idea of itself.” The Office Action is not free to rely on an
abstraction (“organizing human activity” or “idea of itself”)
of an abstraction (the nine words excerpted from claim 1) of
an abstraction (the selected language of claim 1 amounting to
almost five lines of text) of the actual claim language (which
actually includes 40+ lines of text) when framing the abstract
idea to which the claims allegedly are directed.
App. Br. 15–16. Appellant also presents claim features that are recited in
detail but not discussed by the Examiner, contending:
[C]laim 1 (for example) is specific about what inputs are received
from the user, how the net is developed and the specific feature
of the developed net based on the received inputs, compiling a
list of specific paths through the net, displaying compiled list of
paths to the user in text-based and/or graphic form and a filter list
including specific features, receiving user-specific filters, and
excluding individual paths that fail to meet the one or more
user-specified filters.
Id. at 17. Appellant further contends that “[s]o much of the claim has not
been considered it is somewhat difficult to know where to begin pointing out
the errors in this approach.” Id. at 16 (underlining omitted).
We agree with Appellant and add the following for emphasis. The
claimed invention develops and uses a net of source objects, target objects,
pathways between the source objects and target objects, required stopover
items and maximum path lengths between the source objects and target
objects, and statuses of each object as a methodic-level object and instanced
concrete-level object (each concrete-level object is an instance of a
methodic-level object). Spec. ¶ 18. Via these features, the claimed
invention also permits a user to compile a list of paths restricted to (filtering
out) objects, items, and path segments meeting user-specified criteria. Id.
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Appellant’s Figure 5, reproduced below, illustrates an example of the
invention’s above features (see infra) and particularly a “net that includes
methodic objects, relations between the method objects, and concrete
objects.” Id. (describing Figure 3).4 The Specification describes the net as
follows:
[M]ethodic objects and relations therebetween, together with
concrete objects, may be thought of as comprising one net.
. . . The dot with the “S” in it is an example for a source item,
where the user starts his question, and the dot with the “T” in it
is the target item in this example. The very thick and dark
relations are paths that lead, more or less, directly from the
source item to the target item. All dots in these paths symbolize

4 The net of Figure 5 is identical to the net of Figure 3 (but selects a different
target object “T” and changes Figure 3’s target object to a stopover
item “X”). To explain the claimed features lacking proper examination,
we reproduce Figure 5 and Specification descriptions of Figures 3 and 5.
Figure 5 illustrates “an example of a net that includes
methodic objects, relations between the method objects, and
concrete objects.” Spec. ¶ 25 (describing Figure 3).
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steps, and may be used to determine the path length. This may
be helpful, for example, when a user wants to limit the number
of steps to reduce the number of results. [N]ot all paths . . . that
lead to the target are marked with heavy, darker lines. This
helps to illustrate that where step limits are imposed, some
paths will not be relevant for a user.
Id. ¶ 45 (describing Figure 3). The Specification further explains:
To make the result paths at least somewhat more defined, it is
also possible to define one or more stopovers. If the user
defines such stopovers, then only paths that contain all of the
defined stopovers will be added to the result. Paths that do not
contain all stopovers will be ignored. Stopovers may in some
instances be methodic objects or concrete objects (e.g., the
source is a person S, the target refers to one or more functions
T, and the stopover is process X).
Id. ¶ 48 (describing Figure 5).
Thus, as shown above, Claim 1 recites all of the above features within
the claim operations identified by the Examiner as constituting judicial
exceptions. However, as reflected by Appellant’s contentions (App. Br. 14),
the Examiner does not meaningfully address the above features, much less
show they constitute judicial exceptions. Instead, the Examiner only
summarily finds “[t]his [combination] is simply the recited receiving,
developing, compiling, displaying, receiving, excluding, and updating data
which can be performed in a computer and is similar to the kind of
‘organizing human activity’ and is an idea of itself.” Non-Final 4 (emphasis
omitted).
As demonstrated by the Guidance, the judicial exception of
“organizing human activity” is not a sweeping category for all activities that
manage and process data. The judicial exception of “organizing human
activity” is rather limited to:
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(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).
84 Fed. Reg. 52 (emphasis added). The Examiner has not shown how the
above claim features fall within one of these “certain” (i.e., specific)
methods of organizing human activity. Additionally, because the Examiner
has failed to show that the claim limitations equate to judicial exceptions, the
Examiner has also failed to show that the claim limitations result in an “idea
of itself.”
Thus, for all the reasons indicated above, we do not sustain the
rejection of claims 1, 3, 5–10, 12–16, 18, 19, and 21–32 under
35 U.S.C. § 101.
DECISION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1, 3, 5−10, 12−16,
18, 19, and 21−32
§ 101 1, 3, 5−10,
12−16, 18, 19,
and 21−32

REVERSED