Gregory M. Gutt et al.

Patent Trials and Appeals Board

Sep 13, 2019

12887859 - (D) (P.T.A.B. Sep. 13, 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.
12/887,859 09/22/2010 Gregory M. Gutt 70186.380US01_82057 3289
65678 7590 09/13/2019
HAYNES AND BOONE, LLP (70186)
IP Section
2323 Victory Avenue
SUITE 700
Dallas, TX 75219
EXAMINER
SHERR, MARIA CRISTI OWEN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
09/13/2019 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):
ipdocketing@haynesboone.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GREGORY M. GUTT, DAVID A. WHELAN,
WAYNE R. HOWE, BARTON G. FERRELL,
and RACHEL RANÉ SCHMALZRIED
____________

Appeal 2018-0024581
Application 12/887,8592
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
KENNETH G. SCHOPFER Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
June 16, 2017) and Reply Brief (“Reply Br.,” filed January 2, 2018), and the
Examiner’s Answer (“Ans.,” mailed November 2, 2017) and Non-Final
Office Action (“Non-Final Act.,” mailed December 21, 2016).
2 Appellants identify “The Boeing Company” as the real party in interest.
App. Br. 2.
Appeal 2018-002458
Application 12/887,859

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 5–23, 26, and 29–31. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED INVENTION
Appellants’ claimed invention “relates to cost functions” and, in
particular, to “cost functions for data transmission, which may be evaluated
based on associated risks” (Spec. ¶ 1).
Claim 1, reproduced below with bracketed notations added, is the sole
independent claim and representative of the claimed subject matter:
1. A method for data transmission from an aircraft,
based upon the determination of cost and risk, the method
comprising:
[(a)] identifying, by a processor, at least one risk area
having a particular location;
[(b)] assigning, by the processor, data transmission costs;
[(c)] establishing different levels of service according to
degree of risk and cost of providing service depending on
transmission costs; and
[(d)] adjusting, with a transmitter, data transmission
performance parameters according to the data transmission costs
and the risks to account for different levels of service, said
parameters comprising a rate of the data transmission, wherein
data is transmitted at a high priority in a high risk area, and data
is transmitted at a low priority in a high cost communication
transmission area where bandwidth is available at high cost.
Appeal 2018-002458
Application 12/887,859

3
REJECTION3
Claims 1, 5–23, 26, and 29–31 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
ANALYSIS
Appellants argue the pending claims as a group (App. Br. 4–8). We
select independent claim 1 as representative. The remaining claims stand or
fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”

3 The Examiner has withdrawn the rejections of the pending claims under
35 U.S.C. § 103(a). See Ans. 3
Appeal 2018-002458
Application 12/887,859

4
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “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.’” Id. at 217–18 (alteration in original).
We are not persuaded, as an initial matter, by Appellants’ argument
that the Examiner has failed to establish a prima facie case of patent-
eligibility (App. Br. 4–6). The Federal Circuit has observed repeatedly that
“the prima facie case is merely a procedural device that enables an
appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d.
1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992)). The court has, thus, held that the USPTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for the rejection, “together with such information and references
as may be useful in judging of the propriety of continuing the prosecution of
[the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(alteration in original). Thus, what is required of the Office is that it sets
forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of § 132. Id.; see also
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (“Section 132 is
violated when a rejection is so uninformative that it prevents the applicant
from recognizing and seeking to counter the grounds for rejection.”).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner notified Appellants that the claims are directed to “providing a
Appeal 2018-002458
Application 12/887,859

5
level of service, such as bandwidth throttling, based on cost and/or risk” and
“assigning costs,” which the Examiner concluded is similar to other concepts
that the courts have held abstract (Non-Final Act. 5–6), and that the claims
do not include additional elements or a combination of elements sufficient to
amount to significantly more than the abstract idea itself (id. at 6–7). The
Examiner, thus, set forth the statutory basis of the rejection in a sufficiently
articulate and informative manner as to meet the notice requirement of
35 U.S.C. § 132. And we find that, in doing so, the Examiner established a
prima facie case of patent-ineligibility.
After Appellants’ briefs were filed in this appeal, and the Examiner’s
Answer mailed, the USPTO published revised guidance for use by USPTO
personnel in evaluating subject matter eligibility under 35 U.S.C. § 101.
2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019 Revised Guidance”). That
guidance revised the USPTO’s examination procedure with respect to the
first step of the Mayo/Alice framework by (1) providing groupings of subject
matter that is considered an abstract idea; and (2) clarifying that a claim is
not “directed to” a judicial exception if the judicial exception is integrated
into a practical application of that exception. Id. at 50. The 2019 Revised
Guidance, by its terms, applies to all applications, and to all patents resulting
from applications, filed before, on, or after January 7, 2019. Id.
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
“determine whether the claims at issue are “directed to” a patent ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
Appeal 2018-002458
Application 12/887,859

6
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, “that integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54-55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea.
We are not persuaded by Appellants’ arguments here that the
Examiner erred in determining that claim 1 is directed to an abstract idea
(App. Br. 6-7). 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 as a whole is directed to
excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network,
Inc., 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. Here, it is clear from the Specification,
Appeal 2018-002458
Application 12/887,859

7
including the claim language, that the claims focus on an abstract idea, and
not on any improvement to technology and/or a technical field.
The Specification is entitled “COST FUNCTION FOR DATA
TRANSMISSION”, and states that the disclosure relates, in particular, “to
cost functions for data transmission, which may be evaluated based on
associated risks” (Spec. ¶ 1) and “to an apparatus, method, and system for
cost functions for data transmission” (id. ¶ 2). The Specification discloses
that the risks are associated with potential danger or harm, e.g., potential
data loss, and have varying levels of severity, which impact the data
transmission cost (id. ¶ 3). Data transmission costs also are impacted by the
amount of available radio frequency bandwidth (id. ¶ 4), and additionally are
related to a data transmission level of service (LoS) and a quality of service
(QoS) (id. ¶¶ 5, 9). The Specification discloses that the data transmission
LoS includes a plurality of different levels of service, each of which has an
associated trigger boundary (id. ¶ 5). The trigger boundary indicates when
to begin data transmission, when to end data transmission, and/or when to
adjust data transmission (id. ¶ 6). The data transmission QoS also includes a
plurality of levels, each of which has an associated data transmission LoS
(id. ¶ 9). Each different QoS also has an associated data transmission
priority, an associated data queuing priority, and an associated rate of data
transmission (id.). The QoS level, thus, controls the amount of information
sent, the priority with which the information is sent, the immediacy or delay
with which the information is sent, and/or which specific information is sent
(id. ¶ 42). In some embodiments, the disclosed method is employed for data
transmission from an aircraft; in other embodiments, the method is
Appeal 2018-002458
Application 12/887,859

8
employed from a spacecraft and/or various types of vehicles, e.g., cars,
boats, trains (id. ¶¶ 11, 12).
Consistent with this disclosure, claim 1 recites a method for data
transmission from an aircraft comprising: (1) identifying a location that has
risks associated with potential danger, harm, and/or data loss,4 i.e.
“identifying, by a processor, at least one risk area having a particular
location” (step (a)); (2) determining data transmission costs, i.e., “assigning,
by the processor, data transmission costs” (step (b)); (3) establishing
different levels of service based on the degree/probability of risk of harm
and the costs of providing the service, i.e., “establishing different levels of
service according to degree of risk and cost of providing service depending
on transmission costs” (step (c)); and (4) adjusting data transmission
performance parameters, e.g., the rate of data transmission, to account for
the different levels of service, i.e., “adjusting . . . data transmission
performance parameters according to the data transmission costs and the
risks to account for different levels of service, said parameters comprising a
rate of the data transmission, wherein data is transmitted at a high priority in
a high risk area, and . . . transmitted at a low priority in a high cost
communication transmission area” (step (d)). These limitations, given their
broadest reasonable interpretation, recite a method for determining the cost
of data transmission operation and, depending on the data transmission
operation cost, establishing different levels of service having different levels
of data transmission performance, according to the degree of associated risk

4 Risks are related to various factors, e.g., topographical features of a terrain,
weather factors, conflict factors, crime factors, terrorism factors,
geographical areas, and/or environmental region factors (Spec. ¶ 10).
Appeal 2018-002458
Application 12/887,859

9
and the cost of providing the service. i.e., a commercial interaction, which is
a method of organizing human activity and, therefore, an abstract idea. See
2019 Revised Guidance, 84 Fed. Reg. at 52; see also, e.g., OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (holding that the
concept of offer-based price optimization is an abstract idea); Content
Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343,
1347 (Fed. Cir. 2014) (explaining that claims directed to “the mere
formation and manipulation of economic relations” and “the performance of
certain financial transactions” have been held to involve abstract ideas).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong 1), we next consider whether the claim recites
“additional elements that integrate the judicial exception into a practical
application” (Step 2A, Prong 2).
The only additional elements recited in claim 1, beyond the abstract
idea, are the claimed “processor” and “transmitter” — both of which are
disclosed in the Specification at a high degree of generality, i.e., as generic
computer components. For example, the Specification discloses that “any
system that is capable of performing basic mathematical calculations may be
employed for the processor of the present disclosure” (Spec. ¶ 20). The
transmitter also is generally described as communicating information and
adjusting data transmission performance parameters, without any structural
details (see, e.g., id. ¶¶ 14–17).
We find no indication in the Specification, nor do Appellants direct us
to any indication, that the operations recited in claim 1 invoke any assertedly
inventive programming, require any specialized computer hardware or other
inventive computer components, i.e., a particular machine, or that the
Appeal 2018-002458
Application 12/887,859

10
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 an 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.5
Appellants note that claim 1 recites that “data is transmitted at a high
priority in a high risk area, and data is transmitted at a low priority in a high
cost communication transmission area where bandwidth is available at high
cost” (App. Br. 6). And Appellants argue that because “[t]he act of data
being transmitted at a high priority in a high risk area requires the use of a
tangible device (e.g., a transmitter), and cannot be performed as a mental
process,” it is not an abstract idea (id.).

5 The Revised Guidance references the MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e) in describing the
considerations that are indicative that an additional element or combination
of elements integrates the judicial exception, e.g., the abstract idea, into a
practical application. Id. at 55. If the recited judicial exception is integrated
into a practical application, as determined under one or more of these MPEP
sections, the claim is not “directed to” the judicial exception.
Appeal 2018-002458
Application 12/887,859

11
Appellants appear to be arguing that any invention that cannot be
performed mentally or by hand, because the claim recites a physical device
is, therefore, not abstract. Yet, a substantially similar argument was
expressly rejected by the Court in Alice. See Alice Corp., 573 U.S. at 223
(“the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention”).
“[A] method that can be performed by human thought alone is merely
an abstract idea and is not patent-eligible under § 101.” CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011). But, it does
not logically follow that methods involving a physical object — i.e., that
arguably cannot be performed entirely in the human mind — are, therefore,
not directed to abstract ideas. As described above, there is no indication
here that the claimed transmitter is other than a generic component used as a
tool in its ordinary capacity, i.e., to transmit information.
Appellants note in their Reply Brief that claim 1 recites that (1) data
transmission performance parameters are adjusted by the transmitter, and
(2) data are transmitted at a high priority in a high risk area and transmitted
at a low priority in a high cost communication transmission area where
bandwidth is available at high cost (Reply Br. 8). Appellants assert, “[a]s
such, the claim demonstrates a technical effect (i.e.[,] the data being
transmitted) resulting from structural and functional features (i.e.[,] the rate
of data transmission being adjusted by the transmitter) to render the claims
patent eligible” (id.). But we fail to see why, and Appellants do not explain
why, this “technical effect” renders the claims patent eligible.
Further responding to the Examiner’s Answer, Appellants assert in the
Reply Brief that the claims are not directed to an abstract idea, but instead
Appeal 2018-002458
Application 12/887,859

12
“provide a technical solution to a problem in the technical field of data of
data transmission from an aircraft” (id. 2). Referencing paragraph 34 of the
Specification, Appellants, thus, argue that “the present claims are directed to
a method for the transmission of data from an aircraft based on cost/risk
functions that are related to the cost of providing transmission service
balanced against the difficulty of recovering the black box in the event of an
airplane crash in a particular region,” and, as such, “are directed to an
improvement to the technical field of data transmission from an aircraft” (id.
at 4–5).
That argument is not persuasive at least because it is not
commensurate with the scope of the claim. We find nothing in claim 1 that
recites balancing the cost of providing transmission service against the
difficulty of recovering the black box in the event of an airplane crash.
We also are not persuaded of Examiner error to the extent Appellants
maintain that the claims patent-eligible because there is no risk of
preemption (Reply Br. 7–8). There is no dispute that the Supreme Court has
described “the concern that drives [the exclusion of abstract ideas from
patent eligible subject matter] as one of pre-emption,” Alice Corp., 573 U.S.
at 216. But, characterizing preemption as a driving concern for patent
eligibility is not the same as characterizing preemption as the sole test for
patent eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption
Appeal 2018-002458
Application 12/887,859

13
may signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility.” Id.
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim are no more than generic
components used as tools to perform the recited abstract idea. As such, they
do not integrate the abstract idea into a practical application. See Alice
Corp., 573 U.S. at 223–24 (“[W]holly generic computer implementation is
not generally the sort of ‘additional feature[e]’ that provides any ‘practical
assurance that the process is more than a drafting effort designed to
monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)).
Accordingly, we agree with the Examiner that claim 1 is directed to an
abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 adds specific limitations beyond the judicial exception that
are not “well-understood, routine, conventional” in the field, or simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception.
As described above, the only claim elements beyond the abstract idea
are the claimed “processor” and “transmitter.” Appellants cannot reasonably
dispute, nor do they, that the operation of these components is well-
understood, routine, and conventional, where, as here, there is nothing in the
Appeal 2018-002458
Application 12/887,859

14
Specification to indicate that the operations recited in claim 1 require any
specialized hardware or inventive computer components or that the claimed
invention is implemented using other than generic components to perform
generic computer functions, e.g., receiving, processing, and transmitting
information. See Berkheimer v. HP, Inc., 890 F.3d 1369, 1373 (Fed. Cir.
2018) (Moore, J., concurring) (“[I]n accordance with Alice, we have
repeatedly recognized the absence of a genuine dispute as to eligibility for
the many claims that have been defended as involving an inventive concept
based merely on the idea of using existing computers or the Internet to carry
out conventional processes, with no alteration of computer functionality.”)
(citations omitted); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d
1281, 1291 (Fed. Cir. 2018) (“BSG Tech does not argue that other, non-
abstract features of the claimed inventions, alone or in combination, are not
well-understood, routine and conventional database structures and activities.
Accordingly, the district court did not err in determining that the asserted
claims lack an inventive concept.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 5–23, 26, and 29–31,
which fall with claim 1.6

6 Appellants summarily assert that even if claim 1 is found to be directed to
an abstract idea, “the subject matter of [dependent] claims 30 and 31
amount[s] to significantly more than the alleged abstract idea” (App.
Br. 7-8). But, Appellants merely quote the claim language, without
providing any persuasive argument or technical reasoning to support their
position.
Appeal 2018-002458
Application 12/887,859

15
DECISION
The Examiner’s rejection of claims 1, 5–23, 26, and 29–31 under
35 U.S.C. § 101 is affirmed.
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).

AFFIRMED