AT & T Intellectual Property II, L.P.

Patent Trials and Appeals Board

Jun 22, 2020

14950664 - (D) (P.T.A.B. Jun. 22, 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.
14/950,664 11/24/2015 Michael L. Asher 40147/05702(2006A187CON) 5530
83719 7590 06/22/2020
AT & T Legal Department - FKM
AT & T LEGAL DEPARTMENT, One AT&T Way
ATTN: PATENT DOCKETING ROOM 2A-212
BEDMINSTER, NJ 07921
EXAMINER
GOOD JOHNSON, MOTILEWA
ART UNIT PAPER NUMBER
2616
NOTIFICATION DATE DELIVERY MODE
06/22/2020 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):
eOfficeActionDocs@att.com
mmarcin@fkmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL L. ASHER
____________

Appeal 2019-001687
Application 14/950,664
Technology Center 2600
____________

Before CAROLYN D. THOMAS, CARL W. WHITEHEAD JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 24–43. Claims 1–23 are canceled. See
Claim Appendix. We have jurisdiction over the appeal 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. Appellant identifies the real party in interest as AT&T
Intellectual Property II, L.P. Appeal Br. 2.
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The present invention relates generally to storing a plurality of data
points representing a geographic location. See Spec. Abstract.
Independent claim 33, reproduced below, is representative of the
appealed claims:
33. A method, comprising:
storing a plurality of data points, wherein each data point
comprises of a latitudinal and longitudinal coordinate; and
removing a first data point from a first set of data points
based on i) a first distance between a first coordinate
represented by the first data point and a second coordinate
represented by a second data point of a second set of data
points, ii) a second distance between the first coordinate
represented by the first data point and a third coordinate
represented by a third data point of the first set of data points,
and iii) a relationship between the first and second distances.

Appellant appeals the following rejection:
Claims 24–43 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to patent-ineligible subject matter. Final Act. 2–5.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
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).
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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 the 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.”). For example, 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)).
The USPTO published revised guidance on the application of 35
U.S.C. § 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”), updated by
USPTO, October 2019 Update: Subject Matter Eligibility (available at
https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf) (jointly referred to as “Revised Guidance”); see
also October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942
(Oct. 18, 2019) (notifying the public of the availability of the October
update).
Under the Revised Guidance “Step 2A,” the Office first looks to
whether the claim recites:
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(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)). 84 Fed. Reg. at
51–52, 55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the Office then
(pursuant to the Revised Guidance “Step 2B”) 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. 84 Fed. Reg. at 56.
Step 2A, Prong 1 (Does the Claim Recite a Judicial Exception?)
With respect to independent method claims 33 and 39, and similarly,
system claim 24, the Examiner determines that the claims are directed to
“removing data points and a relationship between distances” (Final Act. 2),
which is an “idea of itself similar to collecting information, analyzing it, and
displaying certain results of the collection and analysis” (Id. at 3), which we
conclude are mental processes, which is a type of abstract idea. The
Examiner also determines that the claims “can also be viewed as being
directed to a mathematical relationship or formula” (Id.), which we conclude
is a mathematical concept, another type of abstract idea. For at least the
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following reasons, we are persuaded that representative claim 33 recites
plural abstract ideas.
Representative claim 33 recites at least the following limitations:
(1) “storing a plurality of data points, wherein each data point comprises of a
latitudinal and longitudinal coordinate,” and (2) “removing a first data point
from a set of data points based on [three specified distances].” These
limitations, under their broadest reasonable interpretation, at least recite
mental processes because the limitations all recite processes that can be
performed in the human mind or pen and paper. See, e.g., CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011)
(determining that a claim whose “steps can be performed in the human mind,
or by a human using a pen and paper” is directed to an unpatentable mental
process). This is true even if the claim recites that a generic computer
component performs the acts. See claim 24 (i.e., a processor); See, e.g.,
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir.
2015) (“Courts have examined claims that required the use of a computer
and still found that the underlying, patent-ineligible invention could be
performed via pen and paper or in a person’s mind.”); see also Revised
Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”).
Specifically, people can perform the “storing” step by simply using
pen and paper to preserve the data points. People can also perform the
“removing” step by looking at data points and using pen and paper to
determine a first and second distance between coordinates and observing a
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relationship between the distances. Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) (“[W]e continue to ‘treat[ ]
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.”’) (citation omitted).
Here, Appellant’s Specification indicates “[i]t should be noted that
other data reduction algorithms may be used to evaluate whether to exclude
Pn from the data set. Another exemplary data reduction algorithm may
evaluate Pn based on angular displacement.” Spec. ¶ 21. In other words,
Appellant’s Specification illustrates using data reduction algorithms to
evaluate whether to remove data from the data set. Furthermore, dependent
claim 38 further evidences that the process of claim 33 is performed using
mathematical calculations:
38. The method of claim 34 [which, in turn, depends from
claim 33], wherein the removing is based on the following
formula:
||(Pn, Plast)||> T * ln(l + Pn, O)||),
where Pn is the first data point, Plast is a further data point of
the first geometric object, T is a threshold value[,] and O is the
second data point.
As such, we agree with the Examiner that claim 33 also recites a
mathematical concept because claim 33 broadly recites “removing a first
data point from a first set of data points based on . . . a first distance . . . a
second distance . . . and a relationship between the first and second
distances.” This limitation, under the broadest reasonable interpretation, and
according to the Guidance, is directed to a mathematical concept because the
data removal steps are illustrated in Appellant’s Specification, and
evidenced by claim 38, as a data reduction algorithm, i.e., a mathematical
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calculation. See October 2019 Update: Subject Matter Eligibility, 4 (Oct.
17, 2019) (“A claim that recites a numerical formula or equation will be
considered as falling within the ‘mathematical concepts’ grouping. In
addition, there are instances where a formula or equation is written in text
format that should also be considered as falling within this grouping. For
example, the phrase ‘determining a ratio of A to B’ is merely a textual
replacement for the particular equation (ratio = A/B).”); SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1165, 1167 (Fed. Cir. 2018) (A claim
reciting “performing a resampled statistical analysis” was directed to a
mathematical concept.).
Appellant does not directly challenge whether the claims recite an
abstract idea, but instead makes arguments more directly related to whether
the claims integrate the judicial exception into a practical application and
whether specific limitations are well-understood, routine, or conventional
activities in the field. Such arguments are addressed below.
Therefore, for at least the aforementioned reasons, we agree with the
Examiner that representative claim 33 recites an abstract idea within the
meaning of the Office’s Revised Guidance, which we conclude are mental
processes and/or mathematical concepts.
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Step 2A—Prong 2 (integration into Practical Application) 2
Under the Revised Guidance, we now must determine if additional
elements in the claims integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Here, we consider the claim as a whole, i.e., “the limitations
containing the judicial exception as well as the additional elements in the
claim besides the judicial exception . . . evaluated together to determine
whether the claim integrates the judicial exception into a practical
application.” October 2019 Patent Eligibility Guidance Update, at 12,
available at http://www.uspto.gov/PatentEligibility.
We discern no additional element (or combination of elements)
recited in Appellant’s representative claim 33, much less any additional
element that integrates the judicial exception into a practical application.
See Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong 2”). In fact, claim 33
recites no additional elements whatsoever.
Independent claim 24, for example, does recite two additional
elements: “a data storage mechanism” (e.g., database) and “a processor.”
However, these additional elements do not: (1) improve the functioning of a
computer or other technology; (2) are not applied with any particular
machine (only with a generic computer); (3) do not effect a transformation
of a particular article to a different state; and (4) are not applied in any
meaningful way beyond generally linking the use of the judicial exception to

2 We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
revised guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
revised guidance). See Revised Guidance, 84 Fed. Reg. at 55 n.25, 27–32.

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a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception. See
MPEP §§ 2106.05(a)–(c), (e)–(h).
Appellant contends that the claims are “directed to improving the
functionality of processing systems, e.g., GIS systems” (Appeal Br. 4), “by
reducing the amount of data that is required to be stored” (id. at 5), “an
improvement in computer functionality” (Id.), “similar[] to Enfish.” Id. at 6.
We disagree with Appellant.
The claims at issue in Enfish were directed to a specific type of data
structure, i.e., a self-referential table for a computer database, designed to
improve the way a computer carries out its basic functions of storing and
retrieving data. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–
36 (Fed. Cir. 2016). In rejecting a § 101 challenge, the court in Enfish held
that “the plain focus of the claims is on an improvement to computer
functionality itself, not on economic or other tasks for which a computer is
used in its ordinary capacity.” Id. at 1336.
Here, Appellant does not point to anything in the claim that resembles
the inventive self-referential data structure at issue in Enfish. Instead, the
claims merely manipulate data, i.e., storing and removing data points.
Appellant also does not direct our attention to anything in the Specification
to indicate that the invention provides an improvement in the computer’s
technical functionality. See generally Appeal Br.
Instead, the claimed method merely reduces a data set size, which
consequently limits processing requirements. See Spec. ¶ 28. That is, here
the arguably innovative technique of the appealed claims is inextricably a
part of the abstract idea of “removing data points.” Moreover, nothing in the
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claims, understood in light of the Specification, requires anything other than
an off-the-shelf conventional database and processor used for storing and
processing data points. Therefore, unlike Enfish, the claims are directed not
to an improvement in computer capabilities, but to the results of applying
purported improvements to an abstract idea.
For at least the reason noted supra, we determine that representative
claim 33 (and claim 24) (1) recite a judicial exception and (2) do not
integrate that exception into a practical application. Thus, representative
claim 33 (and claim 24) are directed to the aforementioned abstract idea.
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Turning to the second step of the Alice inquiry, we now look to
whether claim 33 contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 216. As recognized by the Revised
Guidance, an “inventive concept” under Alice step 2 can be evaluated based
on whether an additional element or combination of elements:
(1) adds a specific limitation or combination of limitations
that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or
(2) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which
is indicative that an inventive concept may not be
present.
See Revised Guidance, 84 Fed. Reg. at 56; see MPEP § 2106.05(d).
Appellant contends “reducing data in a data storage mechanism of a
GIS system to limit storage and/or processing requirements is not a well
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understood, routine or conventional activity within the GIS system
industry.” Appeal Br. 8. Appellant further contends that “the Examiner has
not provided any factual support for concluding that the subject matter of
claim [33] is well-understood, routine and/or conventional, e.g., in the GIS
industry.” Id.
We find no element or combination of elements recited in Appellant’s
claim 33 (or claim 24) that contains any “inventive concept” or adds
anything “significantly more” to transform the abstract concept into a patent-
eligible application. Appellant has not adequately explained how claim 33
(or claim 24) is performed such that it is not a routine and conventional
function of a generic computer. Here, the Examiner provides a rational basis
for concluding, “[t]he ‘data storage mechanism’ and ‘processor’ are recited
at a high level of generality, and are recited as performing generic computer
functions routinely used in computer applications.” Final Act. 3; see also
Ans. 12. This determination is consistent with Appellant’s Specification,
which describes the “processor” and “data storage mechanism” at a high
level of generality, as follows:
A system having a memory for storing a set of instructions and
a processor to execute the set of instructions.
Spec. ¶ 6.
Fig. 2 shows an exemplary GIS system 100 according to the
present invention. The GIS system 100 may store each of the
geometric objects in a data storage 110 (e.g., a database) as a
set of points or nodes. . . . Those skilled in the art will
understand that the use of a database as a data storage
mechanism 110 is only exemplary. Other known data storage
mechanisms 110 may also be used.
Spec. ¶ 14.
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The Court in Alice noted that “‘[s]imply appending conventional
steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo] to
supply an ‘inventive concept.”’ Alice, 573 U.S. at 222 (quoting Mayo, 566
U.S. 79). Here, we determine that the claimed “data storage mechanism”
and “processor” are not enough to supply an inventive concept.
The Examiner’s analysis is a factual determination. See Berkheimer v.
HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (“Whether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination.”). We find the Examiner’s noting of the
generic nature of the component parts recited in the claims provides
sufficient evidence of a generic computer system used to implement the
abstraction. See Credit Acceptance Corp. v. Westlake Services, 859 F.3d
1044, 1057 (Fed. Cir. 2017) (“Significantly, the claims do not provide
details as to any non-conventional software for enhancing the financing
process.”). See Intellectual Ventures I LLC v. Capital One Fin. Corp., 850
F.3d 1332, 1342 (Fed. Cir. 2017) (explaining that “[o]ur law demands more”
than claim language that “provides only a result-oriented solution, with
insufficient detail for how a computer accomplishes it”).
Furthermore, a finding of novelty or non-obviousness does not require
the conclusion that the claimed subject matter is patent-eligible. Although
the second step in the Mayo/Alice framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or
nonobviousness, but, rather, is a search for “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,
573 U.S. at 216. “Groundbreaking, innovative, or even brilliant discovery
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does not by itself satisfy the § 101 inquiry.” Ass’n. for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-
obvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90. See also Diamond v. Diehr, 450 U.S.
175, 188–89 (1981) ( “The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”).
Because Appellant’s independent claim 33 (and claim 24) are directed
to a patent-ineligible abstract concept, do not include additional elements
that integrate the judicial exception into a practical application, and do not
add a specific limitation beyond the judicial exception that is not “well-
understood, routine, and conventional,” we sustain the Examiner’s rejection
of the claims under 35 U.S.C. § 101 as being directed to a judicial exception
to patent-eligible subject matter without reciting significantly more in light
of Alice, its progeny, and the Revised Guidance.
CONCLUSION
The Examiner’s rejection of claims 24–43 under 35 U.S.C. § 101 is
affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
24–43 101 Eligibility 24–43

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

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AFFIRMED