Curtis Villars

Patent Trials and Appeals Board

Aug 12, 2019

14699395 - (D) (P.T.A.B. Aug. 12, 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.
14/699,395 04/29/2015 Curtis VILLARS 0076412-000394 3848
125578 7590 08/12/2019
MASTERCARD
C/O Buchanan Ingersoll & Rooney PC
P.O. Box 1404
Alexandria, VA 22314
EXAMINER
JAMI, HARES
ART UNIT PAPER NUMBER
2162
NOTIFICATION DATE DELIVERY MODE
08/12/2019 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):
ADIPDOC1@BIPC.com
charles.wieland@bipc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CURTIS VILLARS
____________________

Appeal 2018-008947
Application 14/699,3951
Technology Center 2100
____________________

Before ERIC S. FRAHM, DENISE M. POTHIER, and MICHAEL T.
CYGAN, Administrative Patent Judges.

CYGAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–5, 7, 9–15, 17, 19 and 20, which are all of the
claims pending. App. Br. 1. Claims 6, 8, 16 and 18 were cancelled during
prosecution. Id. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 According to Appellant, the real party in interest is Mastercard
International Incorporated. App. Br. 1.
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Disclosed Invention and Exemplary Claims
The disclosed invention relates to generating of indices of activity for
geographic areas. Spec. ¶ 1. Appellant states that this can be beneficial for
“any number of entities across any number of industries,” including payment
transactions, law enforcement efforts, and mobile network coverage. Id. ¶ 2.
Appellant states that the use of geographic activity monitoring can have the
undesirable effect of identifying individuals, for example, where the only
instance of activity occurs in a rural geographic area containing only a single
individual. Id. ¶ 3. Appellant discloses a method of geographic mapping
using weighted areas, wherein each weighted area is based on multiple
weighting factors. Id. ¶ 6.
Independent claim 1, reproduced below, exemplifies the claimed
invention:
1. A method for generating indices of activity for
geographic areas, comprising:
receiving, by a receiving device of a processing server, a
plurality of activity values from a data provider, wherein each
activity value is associated with an entity and a geographic
location;
creating, by a processing device of the processing server,
a geographic grid, wherein the geographic grid includes a
plurality of geographic areas, each geographic area being of an
equal size and including (i) no geographic locations associated
with an activity value or (ii) two or more geographic locations
associated with an activity value;
calculating, by the processing device of the processing
server, a weight value for each geographic area in the created
geographic grid, wherein the weight value is based on at least
(i) a first weight factor applied to each activity value
associated with a geographic location included in the respective
geographic area,
(ii) a second weight factor applied to each activity value
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associated with a geographic location included in an adjacent
geographic area, and
(iii) a third weight factor applied to each activity value
associated with a geographic location included in a tertiary
geographic area adjacent to an adjacent geographic area;
calculating, by the processing device of the processing
server, an index value for each geographic area in the created
geographic grid, wherein the index value is based on at least the
calculated weight value for the respective geographic area and
an average weight value for each geographic area in the
geographic grid;
generating, by the processing device of the processing
server, a map that illustrates each geographic area included in
the geographic grid and indicating each respective calculated
index value; and
transmitting, by a transmitting device of the processing
server, to a data requestor, at least the calculated index value for
one or more geographic areas of the plurality of geographic
areas included in the created geographic grid.
Dependent claims 2–5, 7, and 9–10 incorporate these limitations
through their dependency on claim 1. Independent claim 11, and its
dependent claims 12–15, 17, 19, and 20, recite a system having limitations
commensurate with those of claim 1. Appellant does not argue any claim
separately from claim 1. Accordingly, claims 1–5, 7, 9–15, 17, 19, and 20
stand or fall together.2 37 C.F.R. § 41.37(c)(1)(iv).

2 Should further prosecution occur, Appellant’s attention is directed to
claims 9 and 10, and claims 19 and 20, which depend from cancelled claims
8 and 18, respectively. Since the subject matter of claims 8 and 18 were
included in amended claim 1 and 11 (App. Br. 2), we treat these claims as
depending from claim 1 and 11 respectively solely for the purposes of our
analysis.
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Examiner’s Rejections
The Examiner rejects claims 1–5, 7, 9–15, 17, 19, and 20 under
35 U.S.C. § 101 as failing to claim eligible subject matter.3
ANALYSIS

Principles of Law
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
There is, however, an implicit, longstanding exception to patent-
eligible subject matter in 35 U.S.C. § 101: “[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) (citation omitted). This exception precludes
patenting of “the basic tools of scientific and technological work” from
which all inventions spring. Id. at 216–17 (quotation marks and citation
omitted). Invention or discovery under § 101 is distinguished as being the
application of such tools to an end otherwise satisfying the requirements of
the patent statutes. See Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
The Supreme Court has established a framework for this eligibility
determination. Where a claim is directed towards a law of nature, natural
phenomena, or abstract idea, the elements of the claim as a whole must
ensure that the claim, in practice, amounts to significantly more than a patent
on the law of nature, natural phenomena, or abstract idea itself. Alice, 573

3 The rejections under § 103 have been withdrawn by the Examiner. Ans. 7.
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U.S. at 217–18. In applying this eligibility analysis, our reviewing court has
stated, “the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen[,] . . . the
classic common law methodology for creating law when a single governing
definitional context is not available.” Amdocs (Isr.) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citation omitted).
To address the growing body of precedent, the USPTO recently
published revised examination guidance on the application of § 101. 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 50
(Jan. 7, 2019) (hereinafter 2019 Guidance). The 2019 Guidance seeks to
improve the clarity of the subject matter eligibility analysis and improve
consistency of this analysis across the USPTO. Id.
Under the 2019 Guidance, we first look to whether the claim is
directed to a judicial exception because:
(1) the claim recites a law of nature, natural phenomenon, or abstract
idea, the last of which includes certain groupings, identified as
mathematical concepts, certain methods of organizing human activity
and mental processes; and
(2) the claim as a whole fails to recite additional elements that
integrate the judicial exception into a practical application (see
MANUAL OF PATENT EXAMINATION PROCEDURE (hereinafter “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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adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or instead,
simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Guidance, passim.
We have reviewed the Examiner’s subject matter eligibility rejection
(Final Act. 2–5) in light of Appellant’s contentions that the Examiner has
erred (App. Br. 6–10; Reply Br. 2–5). Further, we have reviewed the
Examiner’s response to Appellant’s arguments (Ans. 3–11). We agree with
Appellant’s contention that the Examiner erred in rejecting the pending
claims 1–5, 7, 9–15, 17, 19 and 20 under 35 U.S.C. § 101.
“Recites an Abstract Idea”
The Examiner states (Ans. 8) that claim 1 recites the steps of:
receiving and collecting activity values, creating a matrix/grid
to store values, calculating a weight values based on different
factors based on adjacent cells of grids, calculating an index
values for geographic locations, and writing the index values on
a map[, which] could be performed in the human mind, or by a
human using a pen and paper. (Emphasis omitted).
The Examiner characterizes these steps as “a mathematical algorithm
for calculating (calculating a weight value and index value) the determining
the index value (measurement of activity) in a geographical area.” Ans. 11.
The Examiner’s rejection treats the claim as reciting concepts that may be
described as a mathematical calculation, or a mental process that could be
performed in the human mind or by a human using pen and paper. Id. at 8,
11.
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Appellant disagrees with the Examiner’s determination, arguing that
the Examiner merely provided conclusory statements, and not reasoned
analysis, to explain why the identified abstract idea corresponds to a concept
that the courts have identified as an abstract idea. App. Br. 8–12. Appellant
further argues that all of the cases cited by Examiner to show the existence
of an abstract idea are not on point to the claims at issue, because each of
those cases are unrelated to the Examiner’s identified abstract idea. Id.
We are not persuaded by Appellant’s arguments. Appellant’s
arguments that no prior case has specifically addressed the identified
abstract idea in this proceeding (concerning a geographic grid having
calculated weight and index values and transmitting the calculated index
value) as being an abstract idea are not persuasive, because under the 2019
Guidance, such a case-comparison approach has evolved into determining of
whether a claim recites matter that falls within enumerated groupings of
abstract ideas. 84 Fed. Reg. at 51–54.4 One such grouping is “mental
process,” described as “concepts performed in the human mind (including an
observation, evaluation, judgment, opinion).” Id. at 52 (internal citations
omitted). Such mental evaluations may include those performed with the
assistance of pen and paper. Id. at 52 n.14.

4 Even under a case-comparison approach, it would not be a persuasive
argument that each discussed case is strictly limited to its facts such that no
prior-identified abstract idea is relevant because no case discusses identical
limitations to those claimed. See, e.g., Amdocs (Isr.) v. Openet Telecom, 841
F.3d 1288, 1295, 1300 (examining “eligible and ineligible claims of a
similar nature from past cases” and finding eligibility “when somewhat
facially-similar claims” are eligible at step one).
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Here, the Examiner has identified steps in claim 1 as setting forth a
process for transforming certain data from activity values to index values,
using calculation steps that can be performed in the mind or with the
assistance of pen and paper. Appellant contends that the identified steps
cannot be performed in the human mind alone, or with the assistance of pen
and paper; however, Appellant does not provide any reasoning to support
this contention such that the Examiner’s determination is shown to be
erroneous. Reply Br. 4. Nor does the Specification indicate that the
identified steps cannot be performed in the human mind, or with the
assistance of pen and paper. See, e.g., Figs. 4A–C; ¶¶ 37–42. Accordingly,
we are not persuaded by Appellant’s arguments that the Examiner has not
shown sufficient reasoning to support a finding that claim 1 recites a mental
process that qualifies, under the 2019 Guidance, as an abstract idea.
“Directed to an Abstract Idea”
Having determined that the claims recite an abstract idea, we next
determine, under Step 2A, Prong 2 of the 2019 Guidance, whether the claims
are directed to that abstract idea, or whether the claims integrate the abstract
idea into a practical application of that abstract idea. 84 Fed. Reg. at 54.
The Examiner finds claim 1 to have elements additional to those
limitations reciting an abstract idea; namely, “requiring a receiver device of
a server to receive a plurality of activity values, a processing device (the
server) to identify a geographic grid, and transmitting the calculated index
by a transmitting device of the server.” Final Act. 4. The Examiner
determines these limitations to merely use the computer (server) as a tool to
implement the abstract idea, that they do not provide meaningful limitations
to the identified abstract idea, that they amount to no more than mere
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instructions to implement the idea on a computer, and/or recite only generic
computer structure that serves to perform generic computer functions. Id. at
4–5.
Appellant contends that claim 1 is not directed to the identified
abstract idea. App. Br. 7; Reply Br. 4. Appellant argues that claim 1
provides “a technological improvement upon such existing systems and
methods by ensuring the protection of entity privacy during the
measurement of activities in geographic areas. . . . by utilizing weighting
values and geographic grids to generate index values for activity in
geographic areas across the grids.” App. Br. 7. Appellant contends that the
decision of McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d
1299 (2019) illustrates that a specification may confirm that the claims
provided a technological improvement over the prior art. Id. at 6–7.
We are not persuaded by Appellant’s arguments that claim 1 improves
any particular technology. Although Appellant contends improvement to
privacy protection, Appellant has not explained if these improvements result
from improvements to technology or from improvements to the abstract
idea. The Specification attributes these improvements to privacy to
“creating the [geographic] grid such that each area includes at least two
activity locations, or none . . . [which] may ensure that no measurement of
activity can be identifiable to a specific individual or entity.” Spec. ¶ 19.
Thus the consideration of the number of activity locations within each grid
area when creating the geographic grid is disclosed as providing the
improvement to privacy.
As best understood, the claimed receiving device, processing device,
and transmitting device function as computational tools to carry out the
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claimed calculations that perform the creation of the geographic grid.
Appellant has not explained how the improvement to privacy necessarily
results from the involvement of the claimed technological components, and
is not solely from the manipulations of data themselves that the Examiner
has identified as the abstract idea. Further, we agree with the Examiner that
the decision in McRO relied, in part, on a determination that the computer
performed a function in a distinctly different manner from a subjective
mental process, such that the computer was not merely used as a tool for
automating subjective mental activity. Ans. 8; McRO, 837 F.3d at 1314.
Accordingly, we are not persuaded that claim 1 is directed to any
improvement in a technology or technological field so as to show error in the
Examiner’s determination that the additionally-recited elements are not more
than a processing tool that aids in the above-identified judicially excepted
mental process. Accordingly, we conclude that the Appellant has not
demonstrated error in the Examiner’s determination that the claim as a
whole fails to recite additional elements that integrate the judicial exception
into a practical application data.
Appellant further contends that the claims do not impermissibly
preempt. App. Br. 12–14. We are not persuaded of error by Appellant’s
preemption argument because preemption concerns are addressed by the
Supreme Court’s eligibility framework, which, as applied here, has resulted
in a finding of patent ineligible subject matter. Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (stating “[w]here a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, . . . preemption concerns are fully addressed and
made moot”). A lack of complete preemption does not make the claims any
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less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362–1363 (“[T]hat the claims do not preempt all price optimization or may
be limited to price optimization in the e-commerce setting do not make them
any less abstract.”).
“Significantly More than the Abstract Idea”
Having determined that the claims are directed to an abstract idea, we
next determine, under Step 2B of the 2019 Guidance, whether the additional
elements of the claim provide significantly more than the recited abstract
idea. 84 Fed. Reg. at 56.
Appellant contends that the claims recite non-conventional
arrangements of additional elements. App. Br. 15–18. Appellant argues that
the claims require a physical step resulting in a “specific, tangible
application” of the abstract idea. Id. at 16. Specifically, Appellant argues
that claim 1 employs “technical processes to apply calculated values and
visually represent the values in a generated map.” Id. (emphasis omitted).
Appellant argues that whereas the Examiner relies upon generically claimed
“processing data” as a well-understood, routine, and conventional function,
the claims provide significantly detail as to the specifics of the processing,
that cannot be equated to “mere ‘processing’.” Reply Br. 11–12.
The Examiner considers the step of generating the map to display the
resulting calculations to be extra-solution activity, because it does not
meaningfully limit the application of the claimed mathematical operations
on the computer, and because courts have previously indicated that data
outputting may be extra-solution activity. Ans. 13. Under the 2019
Guidance, extra-solution activity is a consideration of Step 2A, Prong 2, and
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we have concluded that claim 1 is directed to the abstract idea under that
prong. 84 Fed. Reg. at 56; supra at 8–10.
However, a conclusion that an additional element is extra-solution
activity should be reevaluated in Step 2B to determine if the combination of
claimed steps provide an inventive concept through, for example, gathering
data in an unconventional way. 84 Fed. Reg. at 56. The Examiner states
that “off-the-shelf computer technology is usable to carry out the analysis.”
Ans. 23. The Examiner, relying upon USPTO Guidance and case law,
concludes that “an invocation of already-available computers that are not
themselves plausibly asserted to be an advance, for use in carrying out
mathematical calculations, amounts to a recitation of what is ‘well-
understood, routine, [and] conventional.” Ans. 22–23. Appellant has not
pointed out, nor do we find in the Specification, how the combination of
steps causes the generically claimed computer to display geographic data in
an unconventional manner. The Specification, for example, describes
carrying out calculations on a generic processor and displaying the results on
a generic display that “may be any suitable type of display for displaying
data transmitted by the display interface 602 of the computer system,” such
as a display interface that “include[s] high-definition multimedia interface
(HDMI), digital visual interface (DVI), video graphics array (VGA), etc.”
Spec. ¶ 58; see, e.g., id., ¶¶ 36, 49–58. Accordingly, we are not persuaded
that the combination of the additional elements of receiving device,
processing device, and transmitting device function together to display data
in an unconventional way and therefore include an inventive concept
sufficient to provide eligibility at Step 2B.
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Nor are we persuaded that the presence of a “physical step” in the
claims provides eligibility. The Examiner provides numerous citations to
controlling case law that explains that the mere physicality or tangibility of
an additional element is not a relevant consideration in Step 2B. Ans. 18–
19. As explained by the Court, the presence of a generic computer
performing generic computer functions, such as calculation and transmission
of data, is not enough to transform an abstract idea into a patent-eligible
invention. Alice Corp. v. CLS Bank, 573 U.S. 208, 225–226 (2014).
Accordingly we are not persuaded by Appellant’s argument.
In view of the foregoing, under the 2019 Guidance, informed by our
governing case law concerning 35 U.S.C. § 101, Appellant has not shown
the Examiner erred in concluding claim 1 is directed to a judicial exception,
i.e., an abstract idea, without significantly more, and thus is patent-ineligible
under § 101. We therefore sustain the Examiner’s rejection of claim 1.
Since claims 2–5, 7, 9–15, 17, 19, and 20 stand or fall with claim 1, we
therefore sustain the Examiner’s rejection of those claims.

DECISION
For the above-described reasons, we affirm the Examiner’s rejection
of claims 1–5, 7, 9–15, 17, 19 and 20 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED