Ex Parte Herriot

Patent Trial and Appeal Board

Dec 4, 2018

13998302 (P.T.A.B. Dec. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/998,302 10/18/2013
148433 7590 12/06/2018
McNair Law Firm, P.A.
McNair Law Firm, P.A.
Bank of America Plaza
101 South Tryon Street, Suite 2610
Charlotte, NC 28280
FIRST NAMED INVENTOR
James W. Herriot
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.
738233/09089 2901
EXAMINER
LE,JOHNH
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
12/06/2018 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):
mcnairip@mcnair.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES W. HERRIOT
Appeal2018-003308
Application 13/998,302
Technology Center 2800
Before CATHERINE Q. TIMM, JEFFREYB. ROBERTSON, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 1-20 under 35 U.S.C. § 101 as directed
1 In explaining our Decision, we cite to the Specification of October 18,
2013 (Spec.), Non-Final Office Action dated March 24, 2017 (Non-Final
Act.), Appeal Brief filed October 20, 2017 (Appeal Br.), Examiner's Answer
dated December 11, 2017 (Ans.), and Reply Brief dated February 8, 2018
(Reply Br.).
2 Appellant identifies the real party in interest as SmartSky Networks, LLC.
( Appeal Br. 1.)
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Application 13/998,302
to non-statutory subject matter. 3 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The subject matter of the claims relates to a method, system, and
computer program product for use with a computer system for determining
locations of telecommunication ground stations (see, e,g., claims 1, 10, 17).
Claim 1 is illustrative:
1. A method for determining locations of
telecommunication ground stations, the method comprising:
A) creating a heat map data set representing air traffic
volume at grid units of a geographic region;
B) determining a ground station location at one of the
grid units having associated therewith air traffic volume greater
than that of others of the grid units;
C) modifying the heat map data set by excluding data
representing one or more of the grid units surrounding the
ground station location;
D) repeating B) and C) until a predetermined quantity of
ground station locations is determined; and
E) generating, as an output to a graphical display, a list of
locations of determined ground station locations responsive to
completion of D), the list including the predetermined quantity
of ground station locations.
(Appeal Br. 11, Claims Appendix.)
3 The Examiner withdrew the rejection of claim 1, 10, and 17 under 35
U.S.C. § 103 in the Examiner's Answer. (Ans. 2; see Non-Final Act. 58.)
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Application 13/998,302
OPINION
Appellant does not argue any claim apart from the others. (Appeal Br.
4--7.) We select claim 1 as representative to resolve the issues on appeal.
We agree with the Examiner that the claims are directed to non-
statutory subject matter because they do not amount to significantly more
than an abstract idea in the form of a mathematical algorithm. (Non-Final
Act. 3-5; Ans. 3--4.) We adopt the Examiner's reasoning as our own and
add the following for emphasis.
Section 101 states that "[ w ]hoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title." But even if a claim at first blush
appears to be directed to one of the statutory classes of invention listed in
§ 101, it may be not eligible for a patent. "Phenomena of nature, though just
discovered, mental processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and technological work."
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70-72
(2012) (quotingDiamondv. Diehr, 450U.S. 175,185 (1981) (quoting
Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Thus, a claim that, due to the
drafting efforts of the applicant, appears to fit into one of the statutory
classes, but, in fact, would unduly pre-empt others from making and using
the basic tools of scientific and technological work, is not patentable. Alice
Corp. Pty. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354--55, 57 (2014).
In Alice, the Court extended a framework that had been used in Mayo
for distinguishing claims pre-empting laws of nature, natural phenomena,
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and abstract ideas from claims amounting to patent-eligible applications of
those concepts. Alice, 134 S. Ct. at 2355. As stated in Alice:
First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts. If so, we
then ask, "what else is there in the claims before us?" To
answer that question, we consider the elements of each claim
both individually and as an ordered combination to determine
whether the additional elements transform the nature of the
claim into a patent-eligible application. We have described step
two of this analysis 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.
Alice, 134 S. Ct. at 2355 (internal quotation marks and citations to Mayo
omitted).
Although each step involves its own separate inquiry, the two stages
involve overlapping scrutiny of the content of the claims. Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
The Alice analysis begins with the question "whether the claims at
issue are directed to a patent-ineligible concept." Alice, at 2355. "[T]he
'directed to' inquiry applies a stage-one filter to claims, considered in light
of the specification, based on whether 'their character as a whole is directed
to excluded subject matter."' Enfish, 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)).
One way to determine what the claim is "directed to" is to focus on
the claimed advance over the prior art. Genetic Techs. Ltd. v. Merial L.L.C.,
818 F.3d 1369, 1375 (Fed. Cir. 2016). The advance cannot wholly reside in
patent-ineligible concepts themselves such as mathematical formulas and
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Application 13/998,302
algorithms. See Parker v. Flook, 437 U.S. 584, 591 (1978) ("The process
itself, not merely the mathematical algorithm, must be new and useful.").
We determine that the claimed advance resides in the mathematical
algorithms used to determine air traffic volumes at ground station locations
and to modify the heat map data set by excluding data from the recited heat
map set.
Step A of the method recited in claim 1 is the creation of a heat map
representing air traffic volume at grid units of a geographic location. The
Specification states that "[a]ny variety of real-time and/or archived data sets
can be used to represent air traffic over a region." (Spec. 6.) Thus, the
process of collecting and gathering the data for the heat map data set is well
known. The last step, step E, is merely a step of displaying the data
resulting from the algorithm of the prior steps. Therefore, the claimed
advance lies in steps B-D.
However, steps B-D are steps of manipulating data performed by
computer without any new equipment and merely in a method where data is
gathered, computers are used as tools to manipulate data that is then
displayed. Indeed, the Specification states that "[t]he method, technology,
and algorithms disclosed herein may be implemented in all software and
executed on a data processing hardware system having a standard processor
and memory architecture." (Spec. 5.) Therefore, contrary to Appellant's
arguments, the claim is merely an advance in the algorithm itself, and is not
significantly more than an abstract idea. (Appeal Br. 5-7; Reply Br. 2-5.)
An improvement to a mathematical algorithm is not the type of improvement
our patent laws, as currently written, were designed to protect. As stated in
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Flook, "if 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." Flook, at 595 ( quoting In re Richman, 563
F.2d 1026, 1030 (CCPA 1977)).
Considering the elements of claim 1 both individually and as an
ordered combination to determine whether the additional elements transform
the nature of the claim into a patent-eligible application as required in step 2
of the Alice framework does not change the result. As discussed above, the
steps of creating the heat map and the displaying of the resulting data do not
amount to significantly more than the ineligible mental steps and
mathematical algorithms of the claim.
Appellant has not identified a reversible error in the Examiner's
determination that the claims are directed to non-statutory subject matter.
CONCLUSION
We sustain the rejection of claims 1-20 under 35 U.S.C. § 101.
DECISION
The Examiner's decision is affirmed.
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l).
AFFIRMED
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