Morris, James T.Download PDFPatent Trials and Appeals BoardApr 1, 202012406232 - (D) (P.T.A.B. Apr. 1, 2020) Copy Citation 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. Appeal 2019-000291 Application 12/406,232 2 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. Appeal 2019-000291 Application 12/406,232 3 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 Appeal 2019-000291 Application 12/406,232 4 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 Appeal 2019-000291 Application 12/406,232 5 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: Appeal 2019-000291 Application 12/406,232 6 (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 Appeal 2019-000291 Application 12/406,232 7 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. Appeal 2019-000291 Application 12/406,232 8 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 Appeal 2019-000291 Application 12/406,232 9 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. Appeal 2019-000291 Application 12/406,232 10 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 Appeal 2019-000291 Application 12/406,232 11 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. Appeal 2019-000291 Application 12/406,232 12 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 Copy with citationCopy as parenthetical citation