Ex Parte BARKER et al

Patent Trial and Appeal Board

Dec 28, 2018

12356669 (P.T.A.B. Dec. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/356,669 01/21/2009
63652 7590 01/02/2019
DISNEY ENTERPRISES, INC.
c/o Marsh Fischmann & Breyfogle LLP
8055 East Tufts A venue
Suite 450
Denver, CO 80237
FIRST NAMED INVENTOR
MELANIE R. BARKER
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
08-DIS-230-PR-US-UTL 9295
EXAMINER
CHOY,PANG
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
01/02/2019 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):
PTOMail@mfblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MELANIE R. BARKER, KURT KAUFMANN,
JOSE MOLA, G. NEIL SIMMONS, PETERS. BUCZKOWSKI,
DOUGLAS C. LORD, LARRY B. ROOS, FRANK J. TORTORICI JR.,
and KATHLEEN A. KILMER
Appeal2018-000080 1
Application 12/356,669
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Melanie R. Barker et al. ("Appellants")2 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1--4, 8, 12, 14, 15,
18, and 21-27 under 35 U.S.C. § 101 as directed to non-statutory subject
matter. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision references Appellants' Appeal Brief ("Appeal Br.," filed
April 21, 2017), Reply Brief ("Reply Br.," filed October 3, 2017), the
Examiner's Answer ("Ans.," mailed August 28, 2017), and Final Office
Action ("Final Act.," mailed Dec. 6, 2016).
2 Appellants identify "Disney Enterprises, Inc." as the real party in interest.
Appeal Br. 1.
Appeal2018-000080
Application 12/356,669
STATEMENT OF THE CASE
Claimed Subject Matter
This application is titled "Determining Demand Associated with
Origin-Destination Pairs for Bus Ridership Forecasting." Spec., Title.
Appellants' "invention relates, in general, to methods and systems for
predicting the number of riders or ridership for public or private
transportation such as buses or other vehicles and planning deployment or
dispatching of buses/vehicles and drivers based on such ridership
predictions." Spec. ,r 1.
Claims 1, 8, and 15 are the independent claims on appeal.
Independent claim 1, reproduced below, is illustrative of the subject matter
on appeal.
1. A method comprising:
receiving a set of count data for at least one vehicle
operating to transport passengers along a route with multiple
stops, wherein the route extends between a first origin and a
first destination, wherein at each of the stops between the first
origin and first destination the passengers elect to remain on the
at least one vehicle or to disembark, and wherein the count data
comprises a count of passengers getting on each vehicle at each
of the stops and a count of passengers getting off each vehicle
at each of the stops;
determining a demand for pairs of the stops on the route
based on the on counts and the off counts for the at least one
vehicle;
providing the demand for pairs of the stops on the route;
and
generating a forecast of future demand for the route
based on the demand for pairs of the stops on the route,
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wherein the demand for pairs of the stops on the route is
for predefined time periods for operating the at least one vehicle
on the route and
wherein the demand of at least some of the pairs of the
stops is proportional to the off counts at one of the stops in the
pairs relative to the off counts a set of the stops in the pairs.
Appeal Br. 17 (Claims App.).
ANALYSIS
On October 4, 2016, in a prior Decision on Appeal, the Board entered
a new ground of rejection of then-pending claims 1-6, 8, 12, 14, 15, and
18-27 under§ 101. Appellants filed an amendment on October 13, 2016, in
which independent claims 1 and 15 were amended to include limitations
from previously presented dependent claims. 3 No new limitations have been
added to the claims that were not present in the previous appeal. Claims
1--4, 8, 12, 14, 15, 18, and 21-27 are pending, and claims 5-7, 9-11, 13, 16,
17, 19, and 20 have been canceled. See Appeal Br. 17-20 (Claims App.).
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
3 Specifically: independent claim 1 was amended to include limitations from
canceled dependent claims 5 and 6; and independent claim 15 was amended
to include limitations from canceled dependent claims 19 and 20. Claims 1
and 15 were also amended to delete various limitations including "a
computer system" in claim 1, "a computing device" in claim 15, and "a
translation module" in claims 1 and 15.
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abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 573 U.S. 208,216 (2014) (citation omitted).
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, 573 U.S. at 217. The
first step in that framework is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts," such as an abstract idea.
Id. Abstract ideas include, but are not limited to, fundamental economic
practices, methods of organizing human activities, an idea of itself, and
mathematical formulas or relationships. Id. at 218-20. If the claims are not
directed to a patent-ineligible concept, the inquiry ends. If, however, the
claims are directed to a patent-ineligible concept, the inquiry proceeds to
step two to look at the claim for "something more" by "examin[ing] 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." Id. at 217,221 (quoting Mayo, 566 U.S. at 72-73, 79).
This inventive concept must do more than simply recite "well-understood,
routine, conventional activity." Mayo, 566 U.S. at 79.
Applying the framework in Alice, and as the first step of that analysis,
the Examiner determines, as did the Board, that Appellants' claims are
"directed to forecasting demand for transportation services" which is a
"fundamental economic practice." Final Act. 5. Proceeding to the second
step, the Examiner determines:
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The abstract idea of using the historical data to generate a
forecast of future demand for transportation services is not
meaningfully transformed by applying it to buses or generic
vehicles and taking into account known variables in efficiently
managing a transportation system using generic computer
components. Accordingly, the recited claim limitations, both
individually and as an ordered combination, fail to transform
the nature of the claim into a patent-eligible application.
Id. at 6-7.
Appellants argue independent claims 1, 8, and 15 separately and do
not separately argue any dependent claims. See Appeal Br. 7-15; see also
Reply Br. 2-7. Appellants contend that the Examiner's analysis of each
independent claim is erroneous under both step one (Appeal Br. 7-9; Reply
Br. 4--7) and step two of Alice (Appeal Br. 9-15; Reply Br. 2--4).
Independent Method Claims 1 and 15
Under Alice step one, Appellants argue that "the Examiner erred in his
statement of the abstract idea as the claims were not stated in a form that
includes the features or aspects found by the Office/Board to be novel and
non-obvious." Appeal Br. 9. According to Appellants, "[w]ith such a
restatement of the abstract idea, each of these claims is not similar to any
abstract idea identified by the courts under recent case law, and the
Examiner's rejection of claims 1 and 15 should be reversed under Part 1 of
the Alice Patent Eligibility Analysis." Id.
We are not persuaded of error in the Examiner's rejection. There is
no requirement that the Examiner's articulation of the abstract idea must
copy the claim language or include allegedly "novel or non-obvious"
features. Rather, the Federal Circuit has explained that "the 'directed to'
inquiry applies a stage-one filter to claims, considered in light of the
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specification, based on whether 'their character as a whole is directed to
excluded subject matter."' Enfzsh, 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)). We ask 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. The Examiner's
determination here - that the claims are directed to "forecasting demand for
transportation services" - is fully consistent with the Specification,
including the claim language (see, e.g., Spec, Title ("Determining Demand
Associated with Origin-Destination Pairs for Bus Ridership Forecasting"), ,r
1 ("The present invention relates, in general, to methods and systems for
predicting the number of riders or ridership for public or private
transportation such as buses or other vehicles and planning deployment or
dispatching of buses/vehicles and drivers based on such ridership
predictions, .... "), ,r 7 ("The present invention addresses the above
problems by providing methods and systems for forecasting future ridership
and demand for bus and other transportation services based upon actual
measured or counted use."), original claim 1 ("[a] method for forecasting
demand for transportation services"), original claim 15 ("[a] computer-based
method for predicting future ridership on a transportation route")).
Appellants' invention relates to gathering passenger information for a
vehicle's route and generating a forecast of future demand for the route. The
individual steps comprising the method, i.e., gathering information,
analyzing same to determine a demand for pairs of the stops on the route,
and generating a forecast of future demand for the route based on that
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analysis, are similar to others that have been found to be abstract. See, e.g.,
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1361-62 (Fed. Cir.
2015) (a method comprising (1) testing prices, (2) gathering statistics about
how customers reacted to the prices, (3) using that data to estimate
outcomes, and (4) acting on estimated outcomes (i.e., automatically selecting
and offering new prices based on estimated outcome) held to be directed to
the abstract idea of price optimization). Monitoring vehicle passenger load
status is also an abstract idea. See Wireless Media Innovations, LLC v.
Maher Terminals, LLC, 100 F. Supp. 3d 405,413 (D.N.J. 2015)
("monitoring locations, movement, and load status of shipping containers
within a container-receiving yard, and storing, reporting and communicating
this information in various forms through generic computer functions" held
to be an abstract idea), aff'd, 636 F. App'x 1014 (Fed. Cir. 2016). And
merely combining several abstract ideas does not render the combination
any less abstract. Cf Shortridge v. Found. Constr. Payroll Serv., LLC, No.
14-CV-04850-JCS, 2015 WL 1739256, at *11 (N.D. Cal. Apr. 14, 2015),
aff'd, 655 F. App'x 848 (Fed. Cir. 2016).
Turning to the second step of the Alice framework, we "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."' Alice, 573 U.S. at 217-18
(alteration in original) (quoting Mayo, 566 U.S. at 72-73). The Supreme
Court in Alice cautioned that merely limiting the use of an abstract idea "to a
particular technological environment" or implementing the abstract idea on a
"wholly generic computer" is not sufficient as an additional feature to
provide "practical assurance that the process is more than a drafting effort
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designed to monopolize the [abstract idea] itself." Id. at 223-24 (alteration
in original) (quoting Mayo, 566 U.S. at 77).
Indeed, claim 1 does not even require the use of a generic computer to
implement the claimed process. Claim 15 indicates in the preamble that the
method is "computer-based" and several steps require storing information
"in memory," but claim 15 does not otherwise indicate that any steps are
performed by a computer. As such, we do not see how claims 1 and 15
could provide an improvement to computer technology. The steps of claims
1 and 15 could all be performed by humans without a computer. Cf
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011) ("[C]omputational methods which can be performed entirely in the
human mind are the types of methods that embody the 'basic tools of
scientific and technological work' that are free to all men and reserved
exclusively to none." ( quoting Gottschalk v. Benson, 409 U.S. 63, 67
(1972))).
Appellants argue that the Board's prior Decision (mailed October 4,
2016) contains evidence that the claims are patent eligible. According to
Appellants, "[t]he Board's finding that these limitations are non-obvious
(i.e., are not well-understood, routine, or conventional) is very strong
evidence that these limitations add significantly more to the Examiner-stated
abstract idea of forecasting demand." Appeal Br. 10.
Appellants' argument is unpersuasive for at least two reasons. As a
preliminary matter, nothing in the prior Decision constitutes a finding by the
Board that any limitations are "non-obvious" or "not well-understood,
routine, or conventional." Instead, in the prior Decision, the Board reversed
the Examiner's obviousness rejection of then pending claims 1-6, 8, 12, 14,
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15, and 18-27 as unpatentable over Li and Rossetti because the Board
determined that the Examiner had not adequately shown that Li discloses
determining demand for a pair of stops.
Moreover, to the extent that Appellants maintain the elements of the
claims necessarily amount to "significantly more" than the abstract idea,
because the claimed methods are allegedly patentable over the prior art,
Appellants misapprehend the controlling precedent. Although the second
step in the Alice framework is termed a search for an "inventive concept,"
the analysis is not an evaluation of novelty or nonobviousness, but rather, 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 217-18 (alteration
in original) (quoting Mayo, 566 U.S. at 72-73). In other words, a novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent
ineligible. See Mayo, 566 U.S. at 89-90 (rejecting the suggestion that
Sections 102, 103, and 112 might perform the appropriate screening function
and noting that in Mayo such an approach "would make the 'law of nature'
exception ... a dead letter"); see also Genetic Techs. Ltd. v. Merial L.L. C.,
818 F.3d 1369, 1376 (Fed. Cir. 2016) ("[U]nder the Mayo/Alice framework,
a claim directed to a newly discovered law of nature ( or natural phenomenon
or abstract idea) cannot rely on the novelty of that discovery for the
inventive concept necessary for patent eligibility .... "). "Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). Indeed, "[t]he 'novelty' of any element or steps in a
process, or even of the process itself, is of no relevance in determining
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whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175,
188-89 (1981 ).
Appellants next argue that "claim 1 includes limitations that apply
generating demands for pairs of stops on a route [ to a] particular machine in
the form of a passenger vehicle ( such as a bus)." Appeal Br. 11.
We are not persuaded by Appellants' argument that the method is
applied to "use of a particular machine," because although the Supreme
Court noted in Bilski v. Kappas, 561 U.S. 593, 604 (2010), that the machine-
or-transformation test is a "useful and important clue" for determining patent
eligibility, the Court, in Mayo, emphasized that satisfying the machine-or-
transformation test, by itself, is not sufficient to render a claim patent-
eligible, as not all transformations or machine implementations infuse an
otherwise ineligible claim with an "inventive concept." See Mayo, 566 U.S.
at 84 ("[S]imply implementing a mathematical principle on a physical
machine, namely a computer, [i]s not a patentable application of that
principle." (citing Benson, 409 U.S. at 64)).
Appellants' argument that the method of claim 1 is applied to a
"particular machine" is also unpersuasive because, as discussed, claim 1
does not require the performance of any steps by a machine, nor does it
require the performance of any acts upon a machine. Claim 1 merely
requires gathering information about a vehicle, namely, "a count of
passengers getting on each vehicle at each of the stops and a count of
passengers getting off each vehicle at each of the stops." Claim 1 is not
limited to any particular way of gathering a count of passengers, and
ostensibly encompasses a train or bus conductor tallying a count of
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passengers at each of the stops. Appellants cannot reasonably argue that
counting the number of passengers getting on and off of a vehicle is an
inventive concept.
Appellants highlight various limitations of claim 1 that allegedly
provide "significantly more" than the concept of forecasting demand for
transportation services. Appeal Br. 11-12. For example, Appellants argue
that
claim 1 has a technical point of novelty (generating a forecast
of future demand based on the demand for pairs of stops, with
the demand being proportional to the off counts relative to the
off counts at a set of the stops in the pairs that cannot be
performed in the mind and/or does not make sense outside of a
machine environment).
Id. at 11. But Appellants do not adequately explain why these steps cannot
be performed in the human mind, or why these steps do not "make sense
outside of a machine environment." On the contrary, these steps could be
performed for example by a stagecoach operator or train conductor counting
passengers and making a forecast of future demand.
As to claim 15, Appellants argue that "the Examiner fails to indicate
that the translating and processing steps involve the creation of origin-
destination pair demand for operating time periods nor that this subject
matter was found by the Board to be unconventional and not well-known
(i.e., not obvious)." Id. at 13. But, as described in the Specification,
translating passenger counts to origin-destination (OD) pairs is a
mathematical formulation. 4 For example, paragraph 20 discloses "[a]
conversion or translation algorithm may be used to convert raw ridership to
4 See, e.g., Spec. ,r,r 20-21, 33.
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demand by OD pair by a time period (e.g., demand for an OD pair for N
minutes such as 15 minute periods, 3 0 minute periods, and the like)." "The
novelty of the algorithm, however, does not determine whether the claim
recites an inventive concept." Coffelt v. NVIDIA Corp., 680 F. App'x 1010,
1011 (Fed. Cir. 2017), cert. denied, 137 S. Ct. 2143 (2017). Indeed, "[i]f a
claim is directed essentially to a method of calculating, using a mathematical
formula, even if the solution is for a specific purpose, the claimed method is
nonstatutory." Parker v. Flook, 437 U.S. 584, 595 (1978) (quoting In re
Richman, 563 F.2d 1026, 1030 (CCPA 1977)).
We conclude that claims 1 and 15 do not contain an inventive concept
sufficient to "'transform the nature of the claim' into a patent-eligible
application." Alice, 573 U.S. at 217 (citation omitted).
In view of the foregoing, we are not persuaded that the Examiner
erred in concluding that claims 1 and 15 are directed to patent-ineligible
subject matter. Accordingly, we sustain the Examiner's rejection of claims 1
and 15 under 35 U.S.C. § 101, including their dependent claims 2--4, 18, and
21-27, which are not separately argued.
Independent System Claim 8
Challenging the Examiner's determination as to claim 8 under Alice
step one, Appellants make similar arguments as for claims 1 and 15
discussed above. See Appeal Br. 7-8. Appellants have not adequately
explained how the step one analysis of claim 8 differs from the analysis of
claims 1 and 15, and Appellants' arguments as to claim 8 are unpersuasive
for the same reasons.
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Appellants argue that claim 8 is not directed to an abstract idea
because it recites a transportation system that "includes buses, an automatic
passenger counter on each of the buses, a vehicle location mechanism on
each of the buses, and a ridership prediction system in wireless
communication with the buses and their counters and location mechanisms."
Id. at 8. We do not agree.
Like method claims 1 and 15, system claim 8 is directed to the
abstract idea of forecasting demand for transportation services. Cf Alice,
573 U.S. at 226 ("[T]he system claims are no different from the method
claims in substance."). Although it is true that the system of claim 8
includes additional devices not present in the method claims, the focus of
claim 8 as a whole is on predicting ridership demand. The additional
limitations, including "a plurality of buses," "an automatic passenger counter
positioned on each of the buses," and "a vehicle location mechanism
positioned on each of the buses" are properly considered under the step two
of Alice.
The introduction of these additional limitations into claim 8 does not
alter the analysis. To qualify as an inventive concept under step two of
Alice, the implementation of the abstract idea must involve "more than
performance of 'well-understood, routine, [and] conventional activities
previously known to the industry."' Content Extraction and Transmission
LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir.
2014) (alteration in original) (quoting Alice, 573 U.S. at 225).
Claim 8 uses conventional data-gathering devices to perform well-
understood, routine, conventional activities previously known to the
industry. We are not apprised of anything in the claims, understood in light
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of the Specification that requires components other than off-the-shelf,
conventional components such as buses, automatic passenger counters, and
vehicle location mechanisms. As in Alice, the hardware components of
claim 8 are "purely functional and generic." Alice, 573 U.S. at 226. For
example, Appellants do not contend that there is anything assertedly
inventive about the "plurality of buses" in claim 8. 5 The data-gathering
devices perform their expected, conventional functions. The Specification
does not disclose a new automatic passenger counter6 or a new vehicle
location mechanism. 7 Cf In re TL! Commc 'ns LLC Patent Litig., 823 F .3d
607, 612 (Fed. Cir. 2016) ("The specification does not describe a new
telephone, a new server, or a new physical combination of the two. The
specification fails to provide any technical details for the tangible
components, but instead predominately describes the system and methods in
purely functional terms."). Claim 8 also uses some unspecified computer to
perform well-understood, routine, conventional activities previously known
5 See Spec. ,r 2 ("Public transportation has long provided buses that travel
along predefined routes and pick up and drop off passengers along the
route.").
6 See Spec. ,r 24 ("A variety of APCs 114 may be used such as infrared
beam-type APCs ( e.g., passive IR counters, target reflective IR counters,
active IR counters, passive optical, or the like), radio beam APCs, pressure
pad-based APCs, magnetic APCs, induction loop APCs, and the like located
on the path(s) of the passengers (e.g., near the door(s) of the bus 110).").
7 See Spec. ,r 25 ("To provide location information, the bus 110 may include
a location device 116 such as, but not limited to, an automatic vehicle
location (A VL) component that uses a satellite-based global positioning
system (GPS) antenna 118 to obtain the location of the bus 110 when the
counts are made by the APC 114.").
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to the industry, such as receiving data from the data-gathering devices and
analyzing data and performing mathematical calculations. See Bancorp
Servs., L.L.C v. Sun Life Assur. Co. of Canada (US.), 687 F.3d 1266, 1278
(Fed. Cir. 2012) ("[T]he use of a computer in an otherwise patent-ineligible
process for no more than its most basic function - making calculations or
computations - fails to circumvent the prohibition against patenting abstract
ideas and mental processes.").
Appellants reproduce two "wherein" clauses of claim 8, 8 and argue
"[ t ]he Examiner in the final Office Action offers no proof or evidence that
these are mere well-known variables." Appeal Br. 13; see also Reply Br. 2-
4. Although the ultimate determination of eligibility is a question of law,
our reviewing court recently held "[ t ]he patent eligibility inquiry may
contain underlying issues of fact." Berkheimer v. HP Inc., 881 F.3d 1360,
13 65 (Fed. Cir. 2018) ( citing Mortg. Grader, Inc. v. First Choice Loan
Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016) ("The§ 101 inquiry 'may
contain underlying factual issues."')). The court in Berkheimer explained
"[ w ]hen there is no genuine issue of material fact regarding whether the
claim element or claimed combination is well-understood, routine, [or]
conventional to a skilled artisan in the relevant field, this issue can be
decided on summary judgment as a matter of law." 811 F.3d at 1368. Thus,
evidence may be helpful where, for instance, facts are in dispute, but
8 Namely, "wherein a demand is calculated for predefined time periods of
operation of the buses based on the ridership," and "wherein the demand
calculated for each of the OD pairs is determined based on an on count for
an origin stop and based on a ratio of the off count for a corresponding
destination stop to a total off count for the route."
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evidence is not always necessary. On the record before us, Appellants have
not persuaded us that evidence is necessary in this case.
As discussed with regard to claim 15, the Specification explains that
translating passenger counts to origin-destination (OD) pairs is a
mathematical formulation. 9 The same is true for the calculation of demand
profiles for the origin-destination pairs for a future operating period for the
buses. 10 The Examiner is not required to produce evidence to show that
claimed mathematical formulations and variables are well-known because
the Supreme Court has held that such limitations are to be treated as a
familiar part of the prior art.
The process itself, not merely the mathematical algorithm, must
be new and useful. Indeed, the novelty of the mathematical
algorithm is not a determining factor at all. Whether the
algorithm was in fact known or unknown at the time of the
claimed invention, as one of the "basic tools of scientific and
technological work," see Gottschalk v. Benson, 409 U.S., at 67
it is treated as though it were a familiar part of the prior art.
Parker v. Flook, 437 U.S. at 591-92 (parallel citation omitted). 11
Unlike the invention in Diehr, the invention here does not involve any
transformation of a physical article "to a different state or thing." 450 U.S.
at 191. Data is gathered using conventional techniques and mathematical
calculations are performed to calculate future demand. Cf Id. ("A
mathematical formula as such is not accorded the protection of our patent
9 See, e.g., Spec. ,r,r 20-21, 33.
10 See, e.g., Spec. ,r 34.
11 Citing Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306
U.S. 86 (1939), and Funk Bros. Seed Co. v. Kala Co., 333 U.S. 127, 130
(1948).
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laws, Gottschalkv. Benson, 409 U.S. 63 (1972), and this principle cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment." (parallel citations omitted)).
We do not see, and Appellants do not adequately explain, what
particular assertedly inventive technology for performing the recited
functions is required for achieving the claimed result. See Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1057 (Fed. Cir. 2017)
("[T]he claims do not provide details as to any non-conventional software
for enhancing the financing process."); see also Intellectual Ventures I LLC
v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) ("Our law
demands more" than claim language that "provides only a result-oriented
solution, with insufficient detail for how a computer accomplishes it.").
We have considered Appellants' remaining arguments regarding
patent eligibility, but we conclude they are not persuasive of error in the
rejection. Accordingly, we sustain the rejection of claim 8 under 35 U.S.C.
§ 101, including dependent claims 12 and 14, which are not separately
argued.
DECISION
The rejection 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).
AFFIRMED
17