Ex Parte Brennan et al

Patent Trial and Appeal Board

Jul 30, 2018

14333609 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/333,609 07/17/2014 Damian F. Brennan
30449 7590 08/01/2018
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
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.
GB920110138US2 6110
EXAMINER
ANTONUCCI, ANNE MARIE
ART UNIT PAPER NUMBER
3667
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
30449@IPLA WUSA.COM
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAMIAN F. BRENNAN, NICHOLAJANE INGLIS HICKMAN,
DAVID POLLINGTON,andKEVINT. SCARR
Appeal2017-006086
Application 14/333,609 1
Technology Center 3600
Before EDWARD A. BROWN, JAMES P. CAL VE, and
ANTHONY KNIGHT,Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Damian F. Brennan et al. ("Appellants") seek review under 35 U.S.C.
§ 134(a) of the Examiner's decision, as set forth in the Final Office Action
dated April 29, 2016 ("Final Act."), rejecting claims 1--4, 6-15, and 17-20. 2
We have jurisdiction under35 U.S.C. § 6(b).
We AFFIRM.
1 International Business Machines Corporation and Vodafone IP Licensing
Limited ("Appellants") are the applicants, as provided by 37 C.F.R. § 1.46,
and are identified as the real parties in interest. Appeal Br. 1.
2 Claims 5 and 16 have been cancelled. Id.
Appeal2017-006086
Application 14/333,609
CLAIMED SUBJECT MATTER
Appellants' disclosure relates to "the field of mobile networks. In
particular, the invention relates to a method, apparatus and a computer
program for determining a common origin, a common destination and a
common route from a network data record generated from network activity
of a mobile device." Spec. 1. 3
Claims 1, 12, and 17 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter:
1. A method for determining a traveled route of a mobile
device in a mobile network, said method comprising:
determining, by a processor of a computer system, a series
of consecutive movements of the mobile device along a path of
locations from an origin location of the path at an earliest activity
of a plurality of activities of the mobile device to a destination
location of the path at a latest activity of the plurality of activities;
said processor accessing from storage a historical set of
routes of the mobile device;
said processor ascertaining at least one common route
from the historical set of routes, wherein the locations in each
common route include all of the locations on the path;
said processor designating a common route of the at least
one common route as the traveled route of the mobile device with
respect to the series of consecutive movements of the mobile
device along the path;
said processor communicating, to a traffic planning
system, the designated common route and other common routes
relating to all network activity records generated by a user of the
mobile device accessing the mobile network, which provides the
traffic planning system with a real-time view of traffic density
alongjoumeypaths in a transport infrastructure thus enablingthe
traffic planning system to make informed decisions about traffic
3 We refer herein to the Substitute Specification filed on April 10, 2015, as
the "Specification" or "Spec."
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planning comprising traffic alerts, redirecting traffic, closing
roads, and opening new roads along new routes;
said processorcomputingaratio of(i) a sum of a coverage
area of a start cell in which one activity of the mobile device was
initiated and a coverage area of an end cell in which the one
activity of the mobile device was terminated to (ii) a distance
between a centroid of the start cell and a centroid of the end cell
such that the distance has a positive value; and
said processor determining a confidence value as a
function of the computed ratio.
Appeal Br. 18-19 (Claims App.).
REJECTION
Claims 1--4, 6-15, and 17-20 are rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
ANALYSIS
Rejection of claims 1--4, 6-15, and 17-20 under 35 US. C. § 101
Claim 14
In rejecting claim 1, the Examiner applies the two-step framework
"for distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts," as set forth in Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct.
234 7, 23 5 5 (2014 ). This framework considers, in the first step, whether the
claims at issue are "directed to" one of those ineligible concepts. Id. If the
claims are not, they satisfy § 101. Id. If the claims are, the second step is to
"consider the elements of each claim both individually and 'as an ordered
4 Appellants argue claims 1--4, 6-15, and 17-20 as a group. Appeal Br. 8-
16. We select claim 1 as representative of the group. Claims 2--4, 6-15, and
17-20 stand or fall with claim 1. See 37 C.F.R. § 41.37( c )(1 )(iv).
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Application 14/333,609
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Id. (quoting Mayo
CollaborativeServs. v. Prometheus Labs., Inc., [566U.S. 66, 79] (2012)).
The Supreme Court characterizes the second step as "a 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."' Id. (quoting Mayo, 566
U.S. at 72-73).
As to step 1 of Alice, the Examiner determines that the claims are
directed to an abstract idea. Final Act. 8. Particularly, the Examiner
determines that claim 1 is representative and is directed to comparing new
and stored information and using rules to identify options. Id. The
Examiner determines that this information is used to make decisions about
one activity (e.g., the current path) by retrieving stored data ( a historical set
of routes), analyzing options (i.e., ascertaining a common route including
each location of the current path from the historical set of routes), and
making a decision (e.g., designating the common route). Id. at 8-9.
As to Alice step 2, the Examiner determines that the additional claim
elements other than the abstract idea amount to no more than "mere
instructions to implement the idea of decision support using a computer, and
merely use a generic computer to perform generic computer functions." Id.
at 9. The Examiner determines that the additional claim elements do not
provide meaningful limitations to transform the abstract idea into a patent
eligible application thereof such that the claim amounts to significantly more
than the abstract idea itself. Id. Additionally, the Examiner determines that
the claims do not recite an improvement to another technology or technical
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field or to the functioning of the computer itself, or provide meaningful
limitations beyond generally linking an abstract idea to a particular
technological environment. Id.
Alice Step 1
Appellants contend that claim 1, as a whole, is directed to
"determining a traveled route of a mobile device in a mobile network."
Appeal Br. 11. This corresponds to the claim preamble. See id. at 18
(Claims App.). Appellants contend that the Examiner's position is
incompatible withEnfishLLCv. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016), because the Examiner's position "focus[ es] on what the claim[]
allegedly involve[s] ([i.e.,] allegedly comparing new and stored information
and using rules to identify options) instead of what the claim as a whole is
directed to (i.e., determining a traveled route of a mobile device in a mobile
network)." Id. at 11-12. Appellants submit that even if claim 1 involves
comparing new and stored information and using rules to identify options,
claim 1 is not directed to this. Reply Br. 3--4. Appellants further assert that
the Examiner has not cited any case law to support the position that
"comparing new and stored information and using rules to identify options
is, in general, [an] abstract idea." Appeal Br. 12. Appellants further contend
that "determining a traveled route of a mobile device in a mobile network" is
not one of the categories of abstract ideas identified in Alice. Id. at 13.
The Examiner submits that, in contrast to Enfish, the claims are
directed to subject matter within the normal, expected manner in which a
computer or a computer network would operate. Ans. 6. The Examiner
determines that the claim is not "directed to anything more than data stored
and manipulated/calculated for communication/transmission, by a processor,
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in a database on a generic computer," and the basic steps of claim 1 are
"receiving/retrieving information ( about a series of consecutive movements
of a device along a path)," "retrieving stored data (historical set of routes),"
"analyzing options (i.e., ascertaining common route( s) based on the
locations along the path)," and "making a decision (e.g., designating a
common route as the traveled route and determining a confidence value)."
Id. at 8.
To the extent it is Appellants' position that Alice must specifically
identify "determining a traveled route of a mobile device in a mobile
network" as a category of abstract ideas, Appellants cite no authority
supporting this position. See Appeal Br. 13. Moreover, we disagree that the
subject matter of claim 1 does not fall into one of the categories of abstract
ideas identified in Alice. That is, as recognized by Appellants, one of the
categories identified in Alice is "methods of organizing human activities."
Id. at 13.
Claim 1 relates to traffic planning. The recited steps of the method
relate to routine data manipulation concepts, which have been identified in
prior cases as abstract ideas. For example, abstract ideas include the
concepts of collecting data, recognizing certain data within the collected data
set, and storing the data in memory. Content Extraction & Transmission
LLC v. Wells Fargo Bank, NA., 776 F.3d 1343, 1347 (Fed. Cir. 2014) ("The
concept of data collection, recognition, and storage is undisputedly well-
known. "). In Content Extraction, the court determined that this concept has
been performed by humans, and was unpersuaded by the argument that the
"claims are not drawn to an abstract idea because human minds are unable to
process and recognize the stream of bits output by a scanner." Id. See also,
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VersataDev. Groupv. 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."); Synopsys, Inc. v. Mentor Graphics
Corp., 839F.3d 1138, 1146(Fed. Cir. 2016)(quotingElec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) ("[A]nalyzing
information by steps people [can] go through in their minds, or by
mathematical algorithms, without more [are] essentially mental processes
within the abstract-idea category."). Additionally, collecting information,
analyzing information (e.g., recognizing certain data within a dataset), and
presenting the results of collecting and analyzing information are also
abstract ideas. Elec. Power, 830 F.3d at 1353-54. Similarly, "collecting,
displaying, and manipulating data" is an abstract idea. Intellectual Ventures
I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017).
Organizing information using mathematical correlations has also been
identified as an abstract idea. Digitech Image Techs., LLC v. Electronics for
Imaging, Inc., 758 F.3d 1344, 1349 (Fed. Cir. 2014).
Claim 1 recites the step of
[a] determining, by a processor of a computer system, a
series of consecutive movements of the mobile device along a
path of locations from an origin location of the path at an earliest
activity of a plurality of activities of the mobile device to a
destination location of the path at a latest activity of the plurality
of activities.
Appeal Br. 18 (Claims App.). As such, step "a" relates, for example, to the
concept of gathering/collecting information and analyzing information. See
Content Extraction, 776 F.3d at 1347; Elec. Power, 830 F.3d at 1353.
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Claim 1 next recites the step of "[b] said processor assessing from
storage a historical set of routes of the mobile device." Appeal Br. 18
(Claims App.). Step "b" relates, for example, to the concepts of data storage
and analyzing data within a stored data base. See Content Extraction, 776
F.3d at 1347; Elec. Power, 830 F.3d at 1353.
Claim 1 next recites the step of" [ c] said processor ascertaining at
least one common route from the historical set of routes, wherein the
locations in each common route include all of the locations on the path."
Appeal Br. 18 (Claims App.). This step relates, for example, to the concept
of recognizing certain data within a stored data base. See Content
Extraction, 776 F.3d at 1347; Elec. Power, 830 F.3d at 1353.
Claim 1 next recites the step of"[ d] said processor designating a
common route of the at least one common route as the traveled route of the
mobile device with respect to the series of consecutive movements of the
mobile device along the path." Appeal Br. 19 (Claims App.). This step
relates, for example, to the concepts of analyzing information, including
manipulating data (see Intellectual Ventures I LLC, 850 F.3d at 1340) and
organizing information using mathematical correlations (see Digitech Image
Techs., 758 F.3d at 1349).
Claim 1 next recites the step of
[ e] said processor communicating, to a traffic planning
system, the designated common route and other common routes
relating to all network activity records generated by a user of the
mobile device accessing the mobile network, which provides the
traffic planning system with a real-time view of traffic density
alongjoumeypaths in a transport infrastructure thus enablingthe
traffic planning system to make informed decisions about traffic
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Application 14/333,609
planning comprising traffic alerts, redirecting traffic, closing
roads, and opening new roads along new routes.
Appeal Br. 19 ( Claims App). Step "e" relates to the concept of presenting
the results of the collecting and analyzing of information. See Elec. Power,
830 F.3d at 1353.
Finally, claim 1 recites the steps of
[fJ said processor computing a ratio of (i) a sum of a
coverage area of a start cell in which one activity of the mobile
device was initiated and a coverage area of an end cell in which
the one activity of the mobile device was terminated to (ii) a
distance between a centroid of the start cell and a centroid of the
end cell such that the distance has a positive value; and
[g] said processor determining a confidence value as a
function of the computed ratio.
Appeal Br. 19 (Claims App.). Steps "f' and "g" relate to the concepts of
analyzing information, including by manipulating data (see Intellectual
Ventures I LLC, 850 F.3d at 1340) and organizing information using
mathematical correlations (see Digitechimage Techs., 758 F.3d at 1349).
Thus, claim 1 relates to various routine data manipulation concepts
that have been identified as being directed to abstract ideas. The recited
steps relate to "organizing human activity" in the technology of travel along
traffic routes. Accordingly, the subject matter of claim 1 falls into one of the
categories of abstract ideas identified in Alice.
Wenotethat, "[i]n cases involving software innovations, [the Alice
step 1] inquiry often turns on whether the claims focus on 'the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an "abstract idea" for which computers are invoked merely
as a tool.'" Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1303
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(Fed. Cir. 2018) (citing Enfish, 822 F.3dat 1335-36). Appellants do not
show that the claimed steps provide any improvement in the capabilities of
the recited processor of a computer system rather than " [ the processor being]
invoked merely as a tool" to execute the recited steps. Id. Accordingly,
Appellants do not apprise us of any error in the Examiner's position as to
how Enfish is applicable to claim 1. Ans. 6.
Accordingly, we are not persuaded by Appellants' contentions that the
Examiner erred in fmding that claim 1 is directed to an abstract idea.
AliceStep2
Regarding Alice step 2, it is Appellants' position that, even assuming
the claims are directed to a judicial exception, the claims recite significantly
more than the abstract idea, and thus, are patent eligible. Appeal Br. 13.
Appellants provide two alternative arguments. Id. at 14--16.
Appellants' frrst argument is that claim 1 improves the technology of
determining a traveled route of a mobile device in a mobile network via the
recitation of steps "f' and "g" reproduced above, which, purportedly, are not
well-understood, routine, and conventional with respect to determining a
traveled route of a mobile device. Id. at 14.
The Examiner responds that these steps merely use a processor to
compute and determine new information from old different information, and
are directed to no more than data stored and manipulated/ calculated, by a
processor, in a database on a generic computer. Ans. 11.
Appellants' frrst argument fails to explain persuasively how steps "f'
and "g," in particular, provide an improvement in computer technologies
generally, or, in the technology of determining a traveled route of a mobile
device in a mobile network, or why the recited features are more than well-
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understood, routine, or conventional. Appeal Br. 14. In support, Appellants
quote description from the Specification. Id. (citing Spec. 7, 11. 1-7). We
note, however, that this description does not appear to pertain specifically to
the features recited in either step "f' or "g." And, Appellants do not
otherwise explain how this description supports their argument with respect
to these claimed steps. Appellants' argument effectively amounts to stating
that the claimed subject matter is an improved abstract idea, which even if
true, is insufficient to transform an abstract idea into patent-eligible subject
matter. See Synopsys, 839 F .3d at 1151 ("But a claim for a new abstract idea
is still an abstract idea.").
Appellants' second argument is that step "e" of claim 1, as reproduced
above, improves the technology of traffic planning. Appeal Br. 15. In
support, Appellants quote description in the Specification, which is similar
to the language of step "e." Id. ( citing Spec. 7, 11. 8-16). The Examiner
responds that the limitations of step "e" merely use a processor to
communicate information to a different system, where the processor is on a
generic computer. Ans. 13.
Appellants' second argument fails to explain persuasively how step
"e" improves the technology of traffic planning, or why the recited features
are more than well-understood, routine, or conventional. In this regard, step
"e" does not recite any limitation regarding the structure of the traffic
planning system. In addition, the recitation, "enabling . .. opening new
roads along new routes," does not require the traffic planning system to
actually take any action following the "communicating" of information from
the processor. Claim 1 does not require the traffic planning system to
actually make any "informed decisions" after receiving this information.
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Appellants also do not explain persuasively how merely communicating the
"designated common route," as well as information relating to "other
common routes relating to all network activity records generated by a user
accessing the mobile network" (Appeal Br. 19 (Claims App. ( emphasis
added)), actually improves the traffic planning system. Nor do Appellants
explain how the "informed decisions" are more than well-understood,
routine, or conventional decisions encountered in traffic planning systems.
We note that claim 1 does not limit the number of "the locations on
the path" or "the historical set of routes." In other words, claim 1 does not
limit the amount of information to be gathered or analyzed relating to these
features. And even if using the recited processor of a computer system
rather than using a human mind and "a pen and paper" would allow the
recited data manipulation steps of the method to be executed more
efficiently, or using more data, for example, we are not persuaded that the
use of such generic processing tools transforms claim 1 into patent-eligible
subject matter. Even assuming the claimed subject matter provides an
improved abstract idea as a result of using a generic processor, this is
insufficient to transform the abstract idea into patent-eligible subject matter.
Accordingly, we sustain the rejection of claim 1. Claims 2--4, 6-15,
and 17-20 fall with claim 1.
DECISION
We affrrm the rejection of claims 1--4, 6-15, and 17-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C. F. R. § 1. 13 6( a )(1)( iv).
AFFIRMED
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