Ex Parte Dressler et al

Patent Trial and Appeal Board

Mar 3, 2015

11733605 (P.T.A.B. Mar. 3, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROBERT MORRIS DRESSLER, JAMES VINCENT
STEELE, ROBERT LEWIS MARTIN, MANLIO ALLEGRA,
and MARK DOUGLAS REUDINK
____________________

Appeal 2012-011087
Application 11/733,605
Technology Center 2600
____________________

Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH, and
JON M. JURGOVAN, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants
1
appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-44. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
2

1
The real party in interest is Polaris Wireless, Inc. and DeMont & Breyer,
LLC.
2
Our Decision refers to the Appeal Brief filed Apr. 9, 2012 (“App. Br.”), the
Examiner’s Answer mailed June 25, 2012 (“Ans.”), the Reply Brief filed
July 25, 2012 (“Reply Br.”), and the Specification filed Apr. 10, 2007
(“Spec.”).
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CLAIMS SUMMARY
The claims are directed to efficient deployment of mobile test units to
gather location-dependent radio-frequency data. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A method comprising:
generating by a data-processing system a drive-test plan to
satisfy a request for empirical data for an electromagnetic signal in a
geographic region, wherein the drive-test plan proposes a
measurement of the electromagnetic signal at each of a non-empty set
of locations L;
wherein the drive-test plan is generated based on an economic
cost-benefit analysis that comprises:
(i) an economic value resulting from implementing the drive-
test plan, and
(ii) an economic cost of implementing the drive-test plan.
Claims 2-8 depend from claim 1.
Independent claim 9 generates an estimate of economic cost
benefit at a location Z for measurement of signal strength along a
route of locations L for a drive-test plan. If the estimate of economic
benefit exceeds the estimate of economic cost, location Z is added to
the drive-test plan. Claims 10-18 depend from claim 9.
Independent claim 19 is the converse of claim 9. Claim 19 recites
determining economic cost and benefit of a drive-test plan without a location
P, and removing the location P from the drive-test plan when the estimate of
the economic benefit exceeds the economic cost. Claims 20-28 depend from
claim 19.
Independent claim 29 is directed to generating estimates of cost and
benefit for two drive-test plans. Claims 30-44 depend from claim 29.

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REJECTIONS
1. Claims 1-44 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter. Ans. 6.
2. Claims 1-5, 9-41, and 46 stand rejected under 35 U.S.C. § 103(a)
based on Somoza (US 6,336,035 B1 issued Jan. 1, 2002) and
Bauer (US 5,793,934 issued Aug. 11, 1998). Ans. 7.
3. Claims 6-8 and 42-44 stand rejected under 35 U.S.C. § 103(a)
based on Somoza, Bauer, and Arpee (US 5,926,762 issued July 20,
1999). Ans. 19.

ANALYSIS
Rejection under 35 U.S.C. § 101
The Examiner and Appellants dispute the subject matter eligibility of
claims 1-44 under 35 U.S.C. § 101. There have been updates in the law and
examiner guidelines concerning patent eligibility after the briefings in this
case. Specifically, Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347
(2014) was decided after conclusion of briefings, and the United States
Patent and Trademark Office published the 2014 Interim Guidance on
Patent Subject Matter Eligibility. 79 Fed. Reg. 74,619, 74,633 (Dec. 16,
2014) (“2014 Interim Guidance”).
The 2014 Interim Guidance sets forth a procedure for examination
starting with determining whether a claim is directed to one of the statutory
categories of subject matter, i.e., process, machine, manufacture, or
composition of matter, and is not wholly directed to a judicial exception to
patentability, namely, a law of nature, physical phenomenon, or an abstract
idea. See Manual of Patent Examining Procedure (“MPEP”) § 2106(I). In
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this case, the claims satisfy this initial determination as they are nominally
directed to methods which are statutory processes, and they do not wholly
preempt the abstract ideas, namely, economic cost-benefit analyses, that are
recited therein.
Next, the 2014 Interim Guidance applies the two-step test for
determining subject matter eligibility as set forth in Mayo Collaborative
Serv. v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012) (“Mayo”). The first
step of Mayo is to determine whether the claim recites a law of nature, a
natural phenomenon, or an abstract idea. The Examiner found the claims all
recite economic cost-benefit analyses, which are mental processes, and are
thus directed to abstract ideas. (Ans. 18, 21). There is no doubt in this case
the claims recite an abstraction, namely, an economic cost-benefit analysis.
The next step under Mayo is to determine if the claim recites
additional elements that amount to significantly more than the judicial
exception. Appellants argue a data-processing system is not a human; that a
general-purpose computer can perform patentable operations, that Section
101 only rarely excludes subject matter from patentability, that the claims
are directed to functional and palpable applications, and that the Examiner
performed no weighing of pros and cons under the 2014 Interim Guidance.
(App. Br. 11–13; Reply Br. 4–5).
The Examiner finds that the methods can be performed mentally or
manually (Ans. 18, 20, 21); that the nominal recitation of a data processing
server is not enough to tie the method to a particular machine (Ans. 18, 19,
22), there is no transformation in the claims (Ans. 18, 20-22), that the claims
merely recite a field in which method is to be applied (Ans. 20, 22), that the
machine is merely an object on which the method operates (Ans. 20, 22),
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that the claims are merely a statement of general concept (Ans. 20, 22), and
that known and unknown use of the concept is covered by the claims (Ans.
18, 20– 22). Weighing these factors against those advanced by Appellants,
the Examiner concludes all claims are directed to patent-ineligible subject
matter (Ans. 22).
On this record, we are not persuaded the Examiner erred in the
rejection of claims 1-44 under 35 U.S.C. § 101. Claims directed to
economic practices or theories are generally not directed to patentable
subject matter. See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347
(2014) (claims directed to mitigating settlement risk found patent-ineligible);
Bilski v. Kappos, 561 U.S. 593 (2010) (“Bilski”) (claims directed to hedging
found patent-ineligible). Although the claims at issue in this case recite
economic cost-benefit analysis in the context of generating a drive-test plan
for performance of RF measurements in a geographic region using a data-
processing system, the basic thrust of the claims is nonetheless performance
of cost-benefit analysis. Similar to the Bilski case, economic cost-benefit
analysis is a fundamental concept long prevalent in our system of commerce.
Computerizing cost-benefit analysis in the claimed context does not amount
to “significantly more” than the abstract idea of cost-benefit analysis itself.
Adding conventional elements to an abstract idea does not render it patent-
eligible. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct.
1289 (2012). Accordingly, we sustain the Examiner’s rejection on this
ground.

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Rejections under 35 U.S.C. § 103(a)
Appellants argue the prior art fails to teach generating a drive-test
plan based on economic cost-benefit analysis according to claims 1-44.
(App. Br. 18-25). Specifically, Appellants argue Somoza fails to disclose an
economic basis for selecting its “‘optimal drive test route,’” stating
Somoza’s route is based instead on the proximity of a street to an antenna at
a cell site and may take into account possible architectural clutter
interference and potential high traffic areas within the cell. (App. Br. 18-19
citing Somoza col. 9, ll. 2-9). Appellants argue Bauer analyzes no economic
value or benefit at all, but rather has the objective to provide as short a
distance as possible from a starting point to a destination without regard to
economic cost benefit of a route or candidate location. (App. Br. 19 citing
Bauer col. 2, ll. 22-23).
Regarding claims 1–8, Appellants argue the prior art discloses no
data-processing system generating a drive-test plan based on economic cost-
benefit analysis, and that comprises an economic value and economic cost
resulting from implementing the drive-test plan. (App. Br. 19–20).
Regarding claims 9-18, Appellants argue the prior art teaches no economic
cost-benefit analysis to add a location to a drive-test plan, or regarding
claims 19-28, to subtract a location from a drive-test plan, or regarding
claims 29-41 to generate multiple drive-test plans based on economic cost-
benefit analysis. Appellants further argue the Examiner is estopped by a
statement in related application, serial no. 11/733,603, Office Action dated
January 19, 2012, in which the Examiner allegedly stated Somoza is silent
on factors relating to economic cost-benefit analysis. (App. Br. 20-21).
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The Examiner states Somoza teaches reducing economic cost when
compared to traditional methods to determine RF propagation. (Ans. 24
(citing Somoza col. 8, l. 1)). The Examiner states when this teaching is
combined with the cost-benefit analysis optimization route of Bauer, one of
ordinary skill in the art would look to saving economic cost as taught by
Somoza (id.). The Examiner further states Appellants are considering the
references individually, and not in combination as required in the
obviousness analysis, and that the costs described in Bauer are only
exemplary, implying costs of other kinds may be implicated by Bauer (id.).
Regarding the Examiner estoppel issue, the Examiner contends Appellants
mischaracterize the Examiner’s statement regarding Somoza.
As noted, Somoza teaches traditional methods to determine RF
propagation have been time consuming and often very costly, and its
software tool allows technicians to generate a simulated, optimal drive test
route within the cell to best determine actual RF propagation. (Somoza col.
7, l. 67 - col. 8, l. 6). We agree with the Examiner, this teaching connotes to
the person of ordinary skill in the art the generation of a drive test route
based on economic cost.
Turning to whether Somoza teaches calculating the drive test route
based on economic benefit, Appellants’ Specification states the benefit of
implementing a candidate test-drive plan equals the sum of many factors,
including characterizations of the electromagnetic clutter, terrain, and
population density at each location visited by a mobile test unit. (Spec.
22-23). Similarly, Somoza teaches graphical representation of drive test
routes on a computer system using cell information including topographical
data, user location data, and RF coverage interference data. (Somoza col. 8,
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ll. 7-19). Although Somoza does not explicitly state such cell information
amounts to economic benefits, they are nonetheless some of the same data
described in Appellants’ Specification as factors summed to determine
economic benefit. In addition, in the commercial context in which Somoza’s
teachings are clearly intended to be used, it is inconceivable that cost-benefit
analysis on some level would not be performed during planning where RF
measurements are to be taken to determine cell coverage. Therefore, we
conclude Somoza teaches determination of drive test routes based on
economic benefit as well as economic cost.
Bauer explicitly teaches estimation of costs and benefits along a route.
(Col. 12, ll. 17-32). Although Appellants argue these are not economic costs
and benefits, as the Examiner noted, the disclosed costs and benefits
mentioned are exemplary. (Ans. 24, 26 citing Bauer col. 12, ll. 17-32). In
addition, path length of a route is inherently or implicitly related to
economic cost via the consumption of energy required to move Bauer’s
autonomous mobile unit along the route. With regard to claims 9-28, we
note that a cost-benefit analysis for a drive-test plan for a candidate route as
taught by the combined prior art necessarily includes cost-benefit analysis
for the points or locations included in or subtracted from the route. With
regard to claims 29-41, as the Examiner noted, the prior art teaches selection
of an optimal drive test route, which implies multiple candidate routes.
(Somoza col. 9, ll. 2-4). Accordingly, considering the references “as a
whole” for what they would connote to a person of ordinary skill, we are not
persuaded the Examiner erred in the prior art rejections. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971)(“the test for combining
references is not what the individual references themselves suggest but
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rather what the combination of disclosures taken as a whole would suggest
to one of ordinary skill in the art.”).
We find no authority supporting any legal theory of Examiner
estoppel by statements made in a related case, and Appellants have cited
none. Although ideally the Examiner’s position would remain consistent
throughout prosecution, assuming arguendo the Examiner did change
position in this case, the Examiner is permitted to do so as prosecution
progresses as warranted by the evidence. See In re Ruschig, 379 F.2d 990,
992-993 (CCPA 1967); In re Ellis, 86 F.2d 412 (CCPA 1936), In re Becker,
101 F.2d 557 (CCPA 1939). Accordingly, we are not persuaded that the
Examiner is estopped in this case by statements made in another.

DECISION
For the foregoing reasons, we sustain the rejection of claims 1–44
under 35 U.S.C. § 101. We also sustain the rejections of claims 1–44 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED

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