Ex Parte Gail et al

Patent Trials and Appeals Board

Mar 25, 2019

13951608 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/951,608 07/26/2013 William B. Gail
36122 7590 03/27/2019
The Ollila Law Group LLC
2569 Park Lane
SUITE 202
Lafayette, CO 80026
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.
33090/001 6002
EXAMINER
SCHECHTER, ANDREW M
ART UNIT PAPER NUMBER
2857
NOTIFICATION DATE DELIVERY MODE
03/27/2019 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):
patents@olgip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM B. GAIL, WILLIAM LORING MYERS, and
TEDW. POST
Appeal2017-008600
Application 13/951,608
Technology Center 2800
Before MARK NAGUMO, JEFFREY R. SNAY, and
MICHAEL G. MCMANUS, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20 under 35 U.S.C. § 101 as claiming judicially
excepted ineligible subject matter. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 We cite to the Specification ("Spec.") filed July 26, 2013; the Final Office
Action ("Final Act.") dated June 23, 2016; Appellant's Appeal Brief ("Br.")
filed November 3, 2016; and the Examiner's Answer ("Ans.") dated March
3,2017.
2 Appellant is Applicant, Global Weather Corporation, which is identified in
the Appeal Brief as the real party in interest (Br. at 3).
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Application 13/951,608
BACKGROUND
The subject matter on appeal relates to weather forecasting. Spec.
1 :4---6. According to the Specification, "[ w ]eather forecasts are often
provided with relatively course (sic) geospatial and temporal resolution." Id.
1 :9--10. Although forecasts may be updated periodically for a user's nearest
major metropolitan area, they "generally do not update instantly or
correspond to a user's specific location." Id. 1:10-12, 19--21. The described
invention involves providing, in response to a user's request, updated
weather information for a particular location. Id. 1 :4--9. Claim 1 is
illustrative:
1. A method for providing weather information to a user,
comprising steps of:
receiving a gridded forecast;
receiving a user request for weather information for a
location of interest within the gridded forecast;
determining if updated sensor data is available for local
grid points located proximate the location of interest;
if updated sensor data is available, updating latest
observation-based conditions at the local grid points; and
updating the weather information based on the updated
sensor data and the gridded forecast.
Br. 31 (Claims Appendix). Claim 11 recites a forecasting system which
includes a processing system configured to perform the steps recited in
claim 1. Each remaining claim on appeal depends from claim 1 or 11.
DISCUSSION
The Examiner rejects claims 1-20 under 35 U.S.C. § 101 as being
directed to a judicial exception-namely, an abstract idea without
significantly more. Final Act. 5-6.
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Application 13/951,608
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine 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." Alice, 573 U.S. at 221 (quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to
transform that abstract idea into a patent-eligible invention." Id.
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The PTO recently published revised guidance on the application of
§ 101. See Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) ("Guidance"). Under Step 1 of the Guidance, we
determine whether the claimed subject matter falls within the four statutory
categories: process, machine, manufacture, or composition of matter. Step
2A of the Guidance is two-pronged, under which we look to whether the
claim recites:
( 1) any judicial exception, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see 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, under Step
2B, look to whether the claim:
adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP §
2106.05(d)); or
simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
See Guidance.
We have considered the Examiner's findings and the Appellant's
arguments in light of the controlling case-law and Guidance, and are not
persuaded the Examiner erred in rejecting the claims under 35 U.S.C. § 101.
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Independent Claims 1 and 11
Guidance Step 1
There is no dispute that each claim on appeal is within a statutory
category. Claim 1 recites a process. Claim 11 recites a system.
Guidance Step 2A, Prong 1
Under Step 2A of the Guidance, we first consider whether the
Examiner erred in determining that the claims recite a judicial exception.
The Examiner determined that claims 1 and 11 recite abstract ideas. Final
Act. 6; Ans. 3--4. For the reasons explained below, we see no error in that
determination.
The Guidance identifies mental processes as one of the enumerated
groupings of abstract ideas. "If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental process category
unless the claim cannot practically be performed in the mind." 2019
Eligibility Guidance 84 Fed. Reg. at 52 n. 14. See also CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1372-3 (Fed. Cir. 2011)
( determining that a claim whose "steps can be performed in the human mind,
or by a human using a pen and paper" is directed to an unpatentable mental
process). This is true even if the claim recites use of a generic computer
component to perform the process steps. See, e.g., Versata Dev. Grp., Inc. v.
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.").
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In this case, claim 1 recites two receiving steps, a determining step,
and a conditional updating step. The determining step involves
"determining if updated sensor data is available for local grid points located
proximate the location of interest." The claim does not require any
particular machine or device in connection with the determining step.
Rather, a person could perform the recited step entirely in the mind by
looking at sensor data and observing whether that data has been updated.
Thus, in the context of claim 1, the step of "determining if updated sensor
data is available" can reside solely within a human thought process.
Accordingly, we conclude that claim 1 recites a mental process, which is
identified in the Guidance as an abstract idea.
Claim 11 recites "a processing system (108) configured to ...
determine if updated sensor data is available for local grid points located
proximate the location of interest." Thus, claim 11 recites the same step
discussed above in connection with claim 1, albeit implemented by a generic
computer processor. "[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention."
Alice, 573 U.S. at 223. Accordingly, we conclude that claim 11 also recites
a mental process, listed in the Guidance as an abstract idea.
Guidance Step 2A, Prong 2
Having determined that the claims recite a judicial exception, our
analysis under the Guidance turns to determining whether there are
additional elements that integrate the exception into a practical application.
See MPEP § 2106.05(a}-(c), (e}-(h). The additional elements in claim 1 are:
(1) receiving a gridded forecast; (2) receiving a user request for weather
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information for a location of interest within the gridded forecast; (3)
updating latest observation-based conditions at the local grid points; and (4)
updating the weather information based on the updated sensor data and the
gridded forecast. Claim 11 includes these same additional elements
implemented by a generic computer processor.
Viewed as a whole, claims 1 and 11 recite the concept of updating
weather data for a user-designated location. The claims do not purport to
improve the functioning of a computer. Nor do they effect an improvement
in any other technology or technical field. See MPEP § 2106.05(a).
Moreover, each of the above-noted steps also can be performed in a person's
mind. "Receiving a gridded forecast" and "receiving a user request for
weather information" encompass perceiving ( e.g., hearing, reading) the
information. "Updating" can be met by incorporating new weather data
either in the mind or by looking at new information and writing or
remembering the updated forecast. As such, these recited steps are not
"additional steps" that "transform the nature of the claim into a patent-
eligible application." See Alice, 573 U.S. at 217; see also Guidance 84 Fed.
Reg. at 55 n. 24 ("USPTO guidance uses the term 'additional elements' to
refer to claim features, limitations, and/ or steps that are recited in the claim
beyond the identified judicial exception.").
We are unpersuaded by Appellant's argument, Br. 12, that updating
weather information as claimed is a specific improvement to the technical
field of providing weather information to a user. The claims recite generic
data collection and updating steps using generically identified technological
means. The Specification states, "[ a ]lthough some systems may update
more often or include finer geospatial resolution, the forecasts generally do
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not update instantly or correspond to a user's specific location." Spec. 1: 19-
21. Thus, the purported technological improvement achieved by the claims
is that the geospatial weather update is performed with regard to a user-
designated location. "[M]erely limiting the field of use of the abstract idea
to a particular existing technological environment does not render the claims
any less abstract." Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d
1253, 1259 (Fed. Cir. 2016).
Nor do the claims change the way in which the recited sensors or
processing system perform their tasks; those components are used for their
ordinary purposes to carry out the process of updating weather information.
In other words, neither claim 1 nor claim 11 applies the judicial exception
with any particular machine. See MPEP § 2106.05(b ). Appellant's
arguments similarly do not persuade us that the process of claim 1 or system
of claim 11 adds any other meaningful (technological) limitation, i.e.,
limitations beyond simply "linking the use" of the abstract idea to generic
technology. See MPEP § 2106.05(c), (e); see also id. at (f)---(h) (mere
instruction to apply a judicial exception (f), insignificant extra-solution
activity (g), and generally indicating a field of use or technological
environment in which to apply a judicial exception (h), are insufficient to
integrate an abstract idea into a practical application). Neither claim 1 nor
11 integrates the judicial exception into a practical application.
Guidance Step 2B
In Alice step two, we consider the elements of the claim, both
individually and as an ordered combination, to assess whether the additional
elements transform the nature of the claim into patent-eligible subject
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matter. Content Extraction & Transmission LLC v. Wells Fargo Bank, 776
F.3d 1343, 1347 (Fed. Cir. 2014). "To save a patent at step two, an
inventive concept must be evident in the claims." RecogniCorp, LLC v.
Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017). "An inventive concept
that transforms the abstract idea into a patent-eligible invention must be
significantly more than the abstract idea itself, and cannot simply be an
instruction to implement or apply the abstract idea on a computer." Bascom
Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349
(Fed. Cir. 2016).
In this context, we also look to see if the additional elements are more
than "well-known, routine, and conventional" so as to amount to an
inventive concept. Conversely, we consider whether these additional
elements simply append "well-known, routine, and conventional" elements,
particularly at a high level of generality, to the judicial exception.
The additional elements are: (1) receiving a gridded forecast; (2)
receiving a user request for weather information for a location of interest
within the gridded forecast; (3) updating latest observation-based conditions
at the local grid points; and ( 4) updating the weather information based on
the updated sensor data and the gridded forecast.
As noted, each of these additional recitations also encompasses a
mental process. Moreover, according to the Specification, updating weather
information based on user's geographic location of interest was
conventional. Spec. 1: 10-12 ("For example, users are often provided
weather forecasts for the nearest major metropolitan area to their location of
interest. Although the rate at which the forecasts are updated may vary,
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often, the forecasts are only updated hourly."); id. 5:32---6: 1 ("Gridded
forecasts are well known in the art.").
Accordingly, we determine that the additional elements involve
further abstract ideas generally applied in a conventional manner to a
particular field of use. These additional elements do not amount to
significantly more than the abstract idea itself.
Dependent Claims 2-10, 12-20
Appellant presents separate arguments directed toward each of the
dependent claims. Particularly, Appellant argues that the additional features
recited in each of claims 2-10 and 12-20 provide a technological
improvement because the resulting updated forecast is more accurate and
more up to date. Br. 13-19. Appellant additionally argues that each of the
dependent claims 6-8 and 16-18 is patent eligible because it is "tied to a
mobile device." Id. at 21, 22. However, Appellant does not provide
persuasive reasoning to support the contention that the additionally recited
features are sufficient to transform the claims into eligible subject matter.
Claims 2-5 and 12-15 recite interpolation of data. Like the "receiving" and
"determining" steps of claim 1, data interpolation can be performed entirely
within the mind or through use of pen and paper. Claims 6-8 and 16-18
recite limitations on the source of the user's request for weather information,
particularly, that the user's request originates from a mobile device.
However, recitation of a mobile device is virtually as generic as a computer
processor and, in this case, refers to a device used solely for data collection
rather than performing the claimed process. Claims 9 and 19 specify that the
designated location of interest is user-selected. Claims 10 and 20 recite that
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gridded forecast data is received at a preset time interval. These recitations
similarly regard the step of data collection and are recited at a relatively high
level of generality. Appellant does not present persuasive reasoning as to
why these dependent claims add features sufficient to transform the abstract
idea into eligible subject matter.
CONCLUSION
On the record before us and for the reasons discussed above, we
sustain the rejection of claims 1-20 under 35 U.S.C. § 101.
DECISION
The Examiner's decision rejecting claims 1-20 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
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