Morris, James T.

Patent Trials and Appeals Board

Apr 1, 2020

12406232 - (D) (P.T.A.B. Apr. 1, 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.
12/406,232 03/18/2009 James T. Morris USC-87 (USCRF 699) 5025
22827 7590 04/01/2020
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
ANDERSON, LYNNE D
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
04/01/2020 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):
USDOCKETING@DORITY-MANNING.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES T. MORRIS
Appeal 2019-000291
Application 12/406,232
Technology Center 2800
BEFORE BEVERLY A. FRANKLIN, JULIA HEANEY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 18–33. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as the University of
South Carolina. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Claim 18 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
A method for determining risk of loss to a wetland habitat
comprising:
receiving, by one or more computing devices, light
detection and ranging data about a wetland habitat elevation, the
light detection and ranging data including input data points
received from a memory device that provide information on the
relative and absolute elevations of the wetland habitat that are
obtained by remote sensing technology;
calculating, by the one or more computing devices, the
frequency distribution of the wetland habitat elevation based on
the light detection and ranging data;
calculating, by the one or more computing devices, a
skewness statistic based on the frequency distribution of the
wetland habitat elevation, the skewness statistic being calculated
from a given number (N) of samples of the wetland habitat
elevation, the skewness statistic being negative, zero, or positive,
and the computer configured to calculate risk of loss to the
wetland habitat by utilizing the skewness statistic;
creating, by the one or more computing devices, a
graphical map based at least in part on the skewness statistic, the
graphical map indicating the risk of loss to wetland habitat at
locations corresponding to samples of the wetland habitat
elevation; and
providing for display, by the one or more computing
devices, the graphical map.

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THE REJECTION
Claims 18–33 are rejected under 35 U.S.C. § 101 as the claimed
invention is directed to non-statutory subject matter because the claimed
invention is directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more.
OPINION
Appellant makes arguments for claims 18, 28, and 33 in support of
patentability. We thus consider each of these claims in this appeal. See 37
C.F.R. § 41.37(c)(iv).
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports the Examiner’s findings and conclusion that the subject matter of
Appellant’s claims is patent-ineligible. Accordingly, we sustain the
Examiner’s rejection on appeal essentially for the reasons set forth in the
Final Office Action and in the Answer, and add the following for emphasis.
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).
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
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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, 69 (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 (1854))); 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
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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 patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks 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.
The PTO published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Guidance”). Under the 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)).
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:
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(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.
See Guidance.

For the reasons stated below, and based on the findings and analysis
provided by the Examiner at pages 2—39 of the Answer and on pages 2––20
of the Final Office Action, we determine that claim 18 is directed to an
abstract idea and does not contain an inventive concept sufficient to
transform the claimed abstract idea into a patent-eligible application. We
therefore sustain the Examiner’s rejection under 35 U.S.C. § 101.

1. Guidance Step 1
Under Step 1 of the Guidance, we consider whether the claimed
subject matter falls within the four statutory categories set forth in
§ 101, namely a “process, machine, manufacture, or composition of
matter.” Guidance, 84 Fed. Reg. at 53—54; see 35 U.S.C. § 101.
Claim 18 recites a “method” and, thus, falls within the “process”
category. Consequently, we proceed to the next step of the analysis.
2. Guidance Step 2A Prong 1
Under Step 2A Prong 1 of the Guidance, we evaluate “whether
the claim recites a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon.” Guidance, 84 Fed. Reg. at 54; see
Alice, 573 U.S. at 216. Claim 18 recites a “method for determining
risk of loss to a wetland habitat comprising: (1) receiving, by one or
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more computing devices, light detection and ranging data about a
wetland habitat elevation, the light detection and ranging data
including input data points received from a memory device that
provide information on the relative and absolute elevations of the
wetland habitat that are obtained by remote sensing technology; (2)
calculating, by the one or more computing devices, the frequency
distribution of the wetland habitat elevation based on the light
detection and ranging data; (3) calculating, by the one or more
computing devices, a skewness statistic based on the frequency
distribution of the wetland habitat elevation, the skewness statistic
being calculated from a given number (N) of samples of the wetland
habitat elevation, the skewness statistic being negative, zero, or
positive, and the computer configured to calculate risk of loss to the
wetland habitat by utilizing the skewness statistic; (4) creating, by the
one or more computing devices, a graphical map based at least in part
on the skewness statistic, the graphical map indicating the risk of loss
to wetland habitat at locations corresponding to samples of the
wetland habitat elevation; and (5) providing for display, by the one or
more computing devices, the graphical map. See Appeal Br. 31
(Claims Appendix).
Consistent with the Examiner’s analysis, we determine that claim 18
recites a judicial exception, i.e., an abstract idea, in the form of
mathematical concepts because the “calculating” steps, for example, involve
the use of mathematical calculations, mathematical equations/relationships,
and/or performing mathematical operations on collected data.
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The mere fact, however, that claim 18 recites an abstract idea in the
form of mathematical concepts does not automatically render the
claim patent-ineligible. Diehr, 450 U.S. at 187 (“A claim drawn to subject
matter otherwise statutory does not become nonstatutory simply because it
uses a mathematical formula.”). Thus, we proceed to the Step 2A Prong 2 of
the Guidance.
3. Guidance Step 2A Prong 2
Under Step 2A Prong 2 of the Guidance, we must “(a) [i]dentify
whether there are any additional elements recited in the claim beyond
the judicial exception(s); and (b) evaluate] those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.” Guidance, 84 Fed. Reg.
at 54–55. Additional elements that merely add insignificant extra-solution
activity to an abstract idea fail to integrate the abstract idea into a patent-
eligible practical application. See id. at 55.
On the record before us, we determine that claim 18, as a whole, does
not integrate the judicial exception into a practical application. As recited
in the claim, in addition to the “calculating” steps, the method also includes
the steps of “receiving” light detection and ranging data, and “creating” a
graphical map, and “providing” for display the graphical map. These
additional elements, however, do not integrate the abstract idea claim 1
recites into a practical application.
Rather, consistent with the Examiner’s findings and analysis (Final
Act. 3–4), we determine that claim 18’s “receiving” step is merely data
gathering steps necessary to conduct the recited abstract idea, which
constitute extra-solution activity insufficient to confer patent-eligibility to
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the claim. Guidance, 84 Fed. Reg. at 55 n.31; MPEP § 2106.05(g); see also
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(holding that mere data gathering is insufficient to confer patent eligibility).
Contrary to Appellant’s position made on page 7 of the Appeal Brief, claim
18 is similar to the claims held ineligible, for example, in Flook. The claims
in Flook required (1) collecting data (i.e., “[determining the present value of
[a] process variable” such as temperature); (2) subjecting the data to a
mathematical operation to “[d]etermin[e] a new alarm base”; and (3) on the
basis of the result of that operation, making a determination. See 437 U.S. at
585, 597. Here, like Flook, claim 18 similarly requires (1) collecting data
(i.e., the “receiving” step); (2) subjecting the data to mathematical operations
(i.e., the “calculating” steps); and (3) on the basis of the results of those
operations, making a determination (i.e., determining a risk of loss).
Appellant argues (Appeal Br. 7––8) that claim 18 is not abstract
because it is directed to a specific improvement in remote sensing
technology, specifically the capture and analysis of LIDAR data points to
provide risk of loss information on the relative and absolute elevations of
wetland landscapes. Appeal Br. 7. Appellant argues that similar to McRO,
Inc. v. BandaiNamco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016),
claim 18 is directed to a specific technological improvement. In particular,
Appellant argues that the method of independent claim 18 receives and
analyzes LIDAR data that provides information on the relative and
absolute elevations of landscapes and calculates a risk of loss estimate,
without a priori knowledge of the vertical limits of a wetland. Appellant
states that the calculated risk of loss statistic can be mapped, and its spatial
distribution can reveal areas that are vulnerable to sea-level rise. Appeal Br.
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7–8. We are unpersuaded by such argument. In regard to arguments that
improvements lie in the mathematical concepts themselves, e.g., calculating
a risk of loss, the Supreme Court has held that “the novelty of the
mathematical algorithm is not a determining factor at all.” See Flook, 437
U.S. at 591–92; see also id. at 594–95 (“Respondent’s application simply
provides a new and presumably better method for calculating alarm limit
values.”); cf. In re Gitlin, No. 2018-1461 (Fed. Cir. June 13, 2019), slip op.
at 5 (“But merely calling for a mathematical concept to be performed more
efficiently or with a particular input does not amount to an application of the
mathematical concept that is patent-eligible.”). We thus agree with the
Examiner’s stated conclusions made on pages 4–8 of the Answer.
Having determined that claim 1 recites a judicial exception but the
additional elements recited in the claim do not integrate the judicial
exception into a practical application, i.e., the claim is directed to an
abstract idea, we proceed to Step 2B of the Guidance.
4. Guidance Step 2B
Under Step 2B of the Guidance, we determine whether the claim
provides an “inventive concept,” i.e., whether the additional elements
beyond the judicial exception, individually and in combination, amount to
“significantly more” than the judicial exception itself. Guidance, 84 Fed.
Reg. at 56. According to the Guidance, “simply appending well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality,” is indicative that an inventive concept is
absent. Id. at 56.
Consistent with the Examiner’s findings and analysis (Final Act. 2––
4, Ans. 11––12), we determine that claim 18 is directed to an abstract idea
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and simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, and
thus, fails to provide an inventive concept sufficient to transform the abstract
idea into patent-ineligible subject matter.
Specifically, regarding the recitation of “receiving, by one or more
computing devices, light detection and ranging data,” the Specification
indicates that, implementation of receipt of such data involves use of various
computer systems, well-understood, routine, conventional and known in the
art. See Spec. 3––5. We do not find Appellant’s argument persuasive of
error in the Examiner’s analysis and findings in this regard.
Thus, we determine the additional elements recited in claim 18
beyond the abstract idea, individually and in combination, do not amount to
“significantly more” than the abstract idea itself. Alice, 573 U.S. 217–218.
Appellant provides separate argument regarding whether independent
claims 28 and 33 are directed to patent eligible subject matter. Appeal Br.
14–22, 22–30. Claim 28 is to a “computing system” and claim 33 is to a
“tangible, non-transitory computer-readable media” but both claims are
substantively similar to claim 18 regarding the dispositive issues in this
appeal. We thus find Appellant’s arguments regarding claims 28 and 33 to
be unavailing for the same reasons set forth with regard to claim 18.
Accordingly, we affirm the Examiner’s rejection of claims 18–33
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
CONCLUSION
We affirm the Examiner’s decision.
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DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
18–33 101 Patent eligibility 18–33

TIME PERIOD FOR RESPONSE
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