Ex Parte Dubens

Patent Trial and Appeal Board

Mar 19, 2018

14017015 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/017,015
11951 7590
LeClairRyan
70 Linden Oaks
Suite 210
FILING DATE
09/03/2013
03/21/2018
Rochester, NY 14625
FIRST NAMED INVENTOR
Edmund S. Dubens
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.
38336.0110 7072
EXAMINER
KHATTAR, RAJESH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
03/21/2018 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):
USPTOinboxroc@leclairryan.com
kelly.badum@leclairryan.com
phoebe.jones@leclairryan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDMUND S. DUBENS
Appeal2016-008708
Application 14/017,015
Technology Center 3600
Before ST. JOHN COURTENAY III, THU A. DANG, and
JASON J. CHUNG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1-21, which are all the claims pending in this application. We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Introduction
Appellant's invention "relates to methods and devices for motor
vehicle driver risk reduction and, more particularly, methods for reducing
the occurrence of risk events through recommended interventions and
devices thereof." (Spec. i-f 1 ).
Appeal 2016-008708
Application 14/017,015
Exemplary Claim
1. A method for optimally analyzing human factor data to
identify and recommend interventions in order to reduce motor
vehicle driver risk and improve driver safety, the method
compnsmg:
obtaining, by a driver intervention device and from
performance data retrieved via one or more communication
networks from a plurality of performance data source server
devices, risk event data included therein and comprising an
electronic indication of a plurality of risk events associated with
a data identifier of a motor vehicle driver for a historical period
of time;
correlating, by the driver intervention device, stored
human factor data with one or more of the risk events in a
human factor mapping table, the stored human factor data
comprising an electronic indication of human factors of the
motor vehicle driver that contributed to one or more of the risk
events in the stored risk event data;
automatically determining, by the driver intervention
device and based on the correlating, a likelihood that each of
the human factors will contribute to a future risk event
associated with the motor vehicle driver based on a number of
correlations of each of the human factors in the stored human
factor data with one of the risk events in the stored risk event
data;
automatically generating, by the driver intervention
device, a plurality of risk level values each associated with one
of the human factors in the stored human factor data based on
the determined likelihood that the one of the human factors will
contribute to a future risk event associated with the motor
vehicle driver;
automatically generating, by the driver intervention
device, a risk reduction plan output based on one of a plurality
of recommended interventions mapped in a stored intervention
library to one of the human factors in the stored human factor
data having a higher associated one of the risk level values for
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Application 14/017,015
the motor vehicle driver than any other of the human factors in
the stored human factor data; and
outputting, by the driver intervention device, the
recommended intervention of the risk reduction plan output in
an electronic format, to a driver computing device associated
with the motor vehicle driver, and via one or more other
communication networks.
(Emphases added).
Rejection
Claims 1-21 are rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter.
Issue on Appeal
Did the Examiner err in rejecting claims 1-21under35 U.S.C. § 101
as being directed to patent-ineligible subject matter?
ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented. To the extent Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv). We highlight and address specific findings
and arguments for emphasis in our analysis below.
Mayo/Alice Analysis under 35 US.C. § 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
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Application 14/017,015
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 589-90 (2013)).
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, 82-84 (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, 134 S. Ct. at 2355.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may 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 2355-57. (emphasis added).
If the claims are not directed to a patent-ineligible concept, the
inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,
1262 (Fed. Cir. 2017).
Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78). We consider the question of
whether the claims are directed to a specific improvement in the
capabilities of the computing devices, or, instead, "a process that qualifies as
an 'abstract idea' for which computers are invoked merely as a tool."
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
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We, therefore, decide under step two whether the claims: (a) set forth
an inventive concept that provides a specific means or method that
improves the relevant technology, or (b) are directed to a result or effect
that itself is the abstract idea, in which the claims merely invoke generic
processes and machinery. See Enfzsh, 822 F.3d at 1336.
The Examiner's Rejection of Claims 1-21 under §101 1
Regarding the first step of the Mayol Alice analysis, the Examiner
concludes that claim 1 is: 2
[D]irected to a method of collecting, organizing, analyzing and
comparing data in order to determine a risk reduction plan
which is an idea of itself. This is similar to other concepts that
have been found by the courts to be abstract in nature such as
comparing data to determine a risk level as in Perkin-Elmer. [3]
Thus, the claim 1 is directed to an abstract idea.
(Non-Final Act. 3) (emphasis added).
1 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
2 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir.
2013).
3 The Examiner cites to PerkinElmer, Inc. v. Intema Ltd., 496 Fed. Appx.
65 (Fed. Cir. 2012), which is a non-precedential Federal Circuit §101 case
involving a calculation to determine the risk of Down's syndrome. (See
PerkinElmer, claims 1 and 20 at *68). The court held: "Because the
asserted claims recite an ineligible mental step and natural law, and no
aspect of the method converts these ineligible concepts into patentable
applications of those concepts, the claims cannot stand. Accordingly, we
find the claims ineligible under section 101 and affirm the
judgment for PerkinElmer." (Id. at *73).
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Similar arguments can be extended to other independent
claims 8 and 15 and hence these claims 8 and 15 are rejected on
similar grounds as claim 1.
Dependent claims 2-7, 9-14 and 16-21 recite additional
program elements which are abstract in nature and do not add
significantly more to the abstract idea.
(Non-Final Act. 4) (emphasis added).
Regarding the second step of the Mayo/Alice analysis, the Examiner
finds the claims: 4
[R ]ecite additional program elements which are abstract in
nature and do not add significantly more to the abstract idea.
There is no inventive concept sufficient to transform the
claimed subject matter into patent-eligible application. The
claims do not amount to significantly more than the abstract idea
itself.
(Non-Final Act. 4) (emphasis added).
In the Answer (3), the Examiner finds that Appellant's claims:
[A ]ppl[y] the abstract idea using a computer. The computer is
merely performing its routine, well-understood and
conventional function of obtaining, correlating, determining,
generating and outputting steps and is similar to what has been
found by the courts (in Alice) not to be adding significantly more
to the underlying abstract idea. In the absence of a computer
implementation, these steps can be performed manually and may
4 The patent eligibility inquiry may contain underlying issues of fact. Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811F.3d1314, 1325 (Fed.
Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881F.3d1360, 1368 (Fed. Cir. 2018).
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be interpreted as a certain methods of organizing human activity
which is an abstract idea.
(emphasis added).
Thus, the Examiner concludes that all claims 1-21 on appeal are not
patent-eligible under 35 U.S.C. § 101.
Mayo/Alice Analysis - Step 1
Although the Examiner includes a detailed "Response to Arguments"
in the Answer (2-7), we note that Appellant has not filed a Reply Brief in
further response. Therefore, we consider Appellant's arguments as advanced
in the Appeal Brief.
Regarding Alice Step 1, Appellant argues, inter alia, that the claims
are not directed to an abstract idea. (App. Br. 5-7). In support, Appellant
merely recites the correlating, automatically determining, and automatically
generating claim limitations (App. Br. 6), and urges that "[t]hese significant
and meaningful limitations in claims 1, 8, and 15 are clearly rooted in
computer technology and are not directed to the abstract concept of
comparing data to determine a risk level." (Id.). Appellant avers that "the
first part of the analysis set forth in the [Examination] Guidelines is not
satisfied, and that the second part of the analysis set forth in the Guidelines
therefore need not be addressed." (App. Br. 7).
However, we conclude Appellant's claims 1-21 are directed to a
method or system of organizing human activity that merely implements
conventional computer devices, servers, and networks to reduce the cost
(e.g., to a fleet operator), of drivers who may have higher risk levels by
"recommend[ing] interventions in order to reduce motor vehicle driver risk
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and improve driver safety." (Claim 1, preamble) (emphasis added).
Independent claims 8 and 15 recite similar language having commensurate
scope. Thus, given the plain language of the claims, we disagree with
Appellant's contention that the claims on appeal are not directed to the
"abstract concept of comparing data to determine a risk level." (App. Br. 6).
We note such determined risk levels are recited as "risk level values
each associated with one of the human factors in the stored human factor
data based on the determined likelihood that the one of the human factors
will contribute to a future risk event associated with the motor vehicle
driver." (Claim 1) (emphases added). Independent claims 8 and 15 recite
similar language having commensurate scope.
Thus, we find such automatically generated "risk level values" are
used to produce the result: "the recommended intervention of the risk
reduction plan output in an electronic format, to a driver computing device
associated with the motor vehicle driver, and via one or more other
communication networks." (emphases added). Independent claims 8 and 15
recite similar language having commensurate scope.
However, our reviewing court guides "[t]he abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1312 (2016) (quoting 0 'Reilly v. Morse, 56
U.S. 62, 113 (1854)) (emphasis added).). See Alice, 134 S. Ct. at 2358
(holding that "the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention").
Here, we find Appellant's claims 1-21 on appeal are analogous to the
method claim considered by the court in Electric Power Group, LLC v.
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Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), at least to the extent that
Appellant's claims are similarly directed to "merely selecting information,
by content or source, for collection, analysis, and display [which] does
nothing significant to differentiate a process from ordinary mental
processes." Id. at 1355. The Federal Circuit has ruled that claims
encompassing data collection and analysis were directed to abstract ideas.
See, e.g., Credit Acceptance Corp., 859 F.3d at 1047, 1054--56 & n.6;
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340
(Fed. Cir. 2017) ("collecting, displaying, and manipulating data" is an
abstract idea. Our reviewing court has concluded that 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, N.A., 776 F.3d 1343, 1347 (Fed.
Cir. 2014).
This reasoning is applicable here. Therefore, regarding the first step
of the Mayo/Alice test, we are not persuaded by Appellant's arguments.
(App. Br. 5-7). Thus, under a broad but reasonable interpretation5 of
exemplary claim 1, the aforementioned case law guides our legal conclusion
that "optimally analyzing human factor data to identify and recommend
interventions in order to reduce motor vehicle driver risk and improve
driver safety" is directed to a fundamental economic business practice
(i.e., reducing the cost of accidents caused by unsafe drivers), which is a
patent-ineligible abstract idea.
5 See n.1, supra.
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Our reviewing court guides that claimed fundamental economic and
conventional business practices are often abstract ideas, even if performed
on a computer. Moreover, but for the recitation of a generic "processor"
(e.g., claim 8), that performs various steps automatically, we conclude the
recited steps or functions of the independent claims could be performed by a
person as mental steps, or with the aid of pen and paper. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson.").
Therefore, on this record, we are not persuaded the Examiner erred in
concluding that all claims 1-21 on appeal are directed to a patent-ineligible
abstract idea.
Mayo/Alice Analysis-Step 2
Because we conclude all claims on appeal are directed to an abstract
idea, we proceed to the second part of the Mayo/Alice analysis. We further
analyze the claims to determine if there are additional limitations that
individually, or as an ordered combination, ensure the claims amount to
"significantly more" than the abstract idea. Alice, 134 S. Ct. at 2357
(emphasis added).
Regarding Alice Step 2, Appellant contends:
[A ]ssuming arguendo that the first part of the analysis was
satisfied, the second part of the analysis under the Guidelines is
not satisfied by claims 1-21. In particular, the Guidelines provide
that the second part of the analysis is not satisfied if the
limitations add "significantly more." Limitations add
"significantly more" when they relate to meaningful limitations
beyond generally linking the use of an abstract idea to a
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particular technological environment or add specific limitations
other than what is well-understood, routine, and conventional in
the field and add unconventional steps that confine the claims to
a particular useful application. Claims 1-21 clearly recite such
meaningful and specific limitations.
(App. Br. 7) (emphasis added).
We disagree, because Appellant merely recites the claim limitations in
support of the assertion. (App. Br. 8). We find nothing in the claims on
appeal that focuses on a specific means or method that improves the recited
"via one or more communication networks from a plurality of performance
data source server devices" (Independent claims 1, 8, and 15), or the
"processor" additionally recited in independent claim 8. In particular, we
find the claims on appeal are silent regarding specific limitations directed to
an improved computer system, processor, memory, network, or
Internet.
Although dependent claims 12 and 19 include a "database" we find
nothing in these claims that is directed to a specific improvement to a
database, such as a "self-referential table ... designed to improve the way
a computer stores and retrieves data in memory," as found by the court
regarding the subject claims in Enfzsh, 822 F.3d at 1339. (emphasis added).
Instead, we find Appellant's claims 12 and 19 merely store data in a
database in the conventional sense. For example, see claim 12: "storing the
performance data in a performance data database;" (emphasis added).
Our reviewing court provides guidance regarding the use of such
generic computer components. Bascom Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) ("An abstract
idea on 'an Internet computer network' or on a generic computer is still an
abstract idea.") (Citation omitted) (emphasis added); Elec. Power Grp., 830
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F.3d at 1355 ("We have repeatedly held that such invocations of computers
and networks that are not even arguably inventive are 'insufficient to pass
the test of an inventive concept in the application' of an abstract idea.")
(Citation omitted)); Intellectual Ventures I, 850 F.3d at 1341 ("Rather, the
claims recite both a generic computer element-a processor-and a series of
generic computer 'components' that merely restate their individual functions
.... That is to say, they merely describe the functions of the abstract idea
itself, without particularity. This is simply not enough under step two.").
Appellant further contends:
Instead, these limitations confine the claims to a particular
useful application of optimizing and improving the technology
of electronic delivery of targeted interventions to motor vehicle
drivers in order to improve driver safety. In fact, the Office has
acknowledged that the limitations of claims 1-21 are not well-
understood, routine, or conventional by indicating on page 3 of
the Office action dated June 2, 2015 that, "the claims 1-21 are
allowable over the prior art of record." As a result, the second
part of the analysis set forth in the Guidelines also is not satisfied
by the above claims 1-21.
(App. Br. 9) (emphasis added).
Appellant's arguments do not persuade us the Examiner erred,
because the Supreme Court emphasizes: "[ t ]he '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." Diamond v. Diehr, 450
U.S. 175, 188-89 (1981) (emphasis added). Our reviewing court further
guides that "[ e ]ligibility and novelty are separate inquiries." Two-Way
Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed.
Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
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1253, 1263 (Fed. Cir. 2016) (holding that "[e]ven assuming" that a particular
claimed feature was novel does not "avoid the problem of abstractness").
Therefore, we disagree with Appellant's statement that "the Office has
failed to set forth a prima facie case of unpatentability to reject independent
claims 1, 8, and 15 as being directed to non-statutory subject matter." (App.
Br. 9). We find the Examiner sufficiently notified Appellant of the reasons
for the rejection "together with such information ... as may be useful in
judging of the propriety of continuing the prosecution of [the] application,"
pursuant to 35 U.S.C. § 132(a). In doing so, the Examiner set forth a prima
facie case of unpatentability under § 101, such that the burden shifted to
Appellant to demonstrate that the claims are patent-eligible.
Because none of Appellant's claims on appeal are directed to an
improvement in a processor, server, database, or other
computer/network component, we find that none of the claim limitations,
viewed "both individually and as an ordered combination," amount to
significantly more than the judicial exception in order to sufficiently
transform the nature of the claims into patent-eligible subject matter. See
Alice, 134 S. Ct. at 2355 (internal quotations omitted) (quoting Mayo, 566
U.S. at 79). Thus, we find the additional elements of a processor, server,
and database, do not provide an inventive concept, without more. (Claims
1-21).
Applying the aforementioned guidance from our reviewing courts to
the claims before us on appeal, we conclude, in our Mayol Alice analysis, that
each of Appellant's claims 1-21, considered as a whole, is directed to (under
step one), a patent-ineligible abstract idea, and under step two, does not
recite something "significantly more" to transform the nature of the claim
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into a patent-eligible application.
We note again that Appellant has not further rebutted the Examiner's
detailed responsive explanations in the Answer (2-7) by filing a Reply Brief.
Accordingly, for at least the reasons discussed above, we sustain the
Examiner's rejection under 35 U.S.C. § 101 of claims 1-21, as being directed
to patent-ineligible subject matter in light of Alice and its progeny. 6
Conclusion
The Examiner did not err in rejecting claims 1-21 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
DECISION
We affirm the Examiner's decision rejecting claims 1-21 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)(l )(iv).
See 37 C.F.R. § 41.50(±).
AFFIRMED
6 To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. See
37 C.F.R. § 41.37(c)(l)(iv).
14