IMS SOLUTIONS, INC.

Patent Trials and Appeals Board

Sep 2, 2020

2020001191 (P.T.A.B. Sep. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/556,977 12/01/2014 Otman A. Basir 60449-259 PUS1 7278
26096 7590 09/02/2020
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
ELCHANTI, ZEINA
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte OTMAN A. BASIR and WILLIAM BEN MINERS
_____________

Appeal 2020-001191
Application 14/556,977
Technology Center 3600
____________

Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
STACY B. MARGOLIES, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of
claims 1–11 and 15. Claims 12–14 have been withdrawn. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, the real party in interest is
IMS Solutions, Inc. See Appeal Br. 1.

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STATEMENT OF THE CASE2
Introduction
Appellant’s claimed invention relates generally to a “precision usage-
based transportation infrastructure charging service[, which] includes a
dynamic road and infrastructure usage engine that can fairly assess road
usage based on any combination of mileage, time of day, vehicle mass,
location, road class, defined zones and other relevant parameters.” Abstract.

Independent Claim 1
1. A system for assessing transportation infrastructure usage
comprising:

an on-board unit installed on a vehicle, the on-board unit configured
to obtain one or more parameters describing vehicle usage and location;
and

a server receiving the one or more parameters from the on-board unit
to assess transportation infrastructure usage by the vehicle, wherein
transportation infrastructure usage by the vehicle is validated using
aggregate vehicle movement information.

Claims Appendix, Appeal Br. 2, as filed in corrected form on Mar. 14, 2019,
in response to a Notification of Non-Compliant Appeal Brief.

2 We herein refer to the Final Office Action, mailed June 13, 2018 (“Final
Act.”); Appeal Brief, filed March 14, 2019 (“Appeal Br.”); the Examiner’s
Answer, mailed October 4, 2019 (“Ans.”), and the Reply Brief, filed
November 30, 2019 (“Reply Br.”).
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Evidence
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Grush US 2004/0181495 Al Sept. 16, 2004
Hamilton, II et al.
(“Hamilton”)
US 2010/0156670 Al June 24, 2010
Davidson US 2013/0031029 A1 Jan. 31, 2013
McCoy et al.
(“McCoy”)
US 2014/0074566 Al Mar. 13, 2014
Wilson et al.
(“Wilson”)
US 2016/0180604 Al June 23, 2016

Rejections3
Rej Claims
Rejected
35 U.S.C. § Reference(s)/Basis
A 1–11, 15 101 Eligibility
B 1, 3–5, 7, 15 103 Davidson, Grush
C 2 103 Davidson, Grush, McCoy
D 6, 8 103 Davidson, Grush, Wilson
E 9, 11 103 Davidson, Grush, McCoy
F 10 103 Davidson, Grush, McCoy, Hamilton

3 The Examiner withdrew the rejection under 35 U.S.C. § 112(b). See Final
Act. 2. Therefore, this rejection is not before us on appeal.

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USPTO § 101 Guidance
The U.S. Patent and Trademark Office (USPTO) has published
revised guidance on the application of 35 U.S.C. § 101. See USPTO
January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (“January 2019 Memorandum”).4
Under that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, 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) (see January 2019
Memorandum, Step 2A – Prong One); and

(2) any additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c),
(e)–(h)) (see January 2019 Memorandum, Step 2A – Prong
Two).5
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:

4 The Office issued a further memorandum on October 17, 2019 (the
“October 2019 Memorandum”) clarifying guidance of the January 2019
Memorandum in response to received public comments. See https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf.
Moreover, “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” January 2019 Memorandum
at 51; see also October 2019 Memorandum at 1.

5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See January 2019 Memorandum — Section III(A)(2).
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(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or

(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception.
See January 2019 Memorandum, Step 2B.
Because there is no single definition of an “abstract idea” under Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014) Step 1, the January 2019
Memorandum synthesizes, for purposes of clarity, predictability, and
consistency, key concepts identified by the courts as abstract ideas to explain
that the “abstract idea” exception includes the following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See January 2019 Memorandum, 84 Fed. Reg. at 52.
According to the January 2019 Memorandum, “[c]laims that do not
recite [subject] matter that falls within these enumerated groupings of
abstract ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
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abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See January 2019 Memorandum, 84 Fed. Reg. at 53.

ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.6

Rejection A of Claims 1–11 and 15 under § 101
Independent Claim 1
1. A system for assessing transportation infrastructure usage comprising:

an on-board unit installed on a vehicle, the on-board unit configured
to obtain one or more parameters describing vehicle usage and location;
and

a server receiving the one or more parameters from the on-board unit
to assess transportation infrastructure usage by the vehicle, wherein
transportation infrastructure usage by the vehicle is validated using
aggregate vehicle movement information.
Claims Appendix 2 (emphases added).

6 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation (BRI) consistent with the Specification. See In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

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Step 2A, Prong One
Under the January 2019 Memorandum, we begin our analysis at Step
2A, Prong One, by first considering whether the claims recite any judicial
exceptions, including certain groupings of abstract ideas, in particular:
(a) mathematical concepts, (b) certain methods of organizing human activity,
and (c) mental processes.
In the Final Office Action, the Examiner concludes that independent
system claims 1 and 15 recite an abstract idea of “determining a toll for road
usage” that is considered to be a method of organizing human activity,
including a business practice or an idea of itself. Final Act. 6. The
Examiner concludes that “‘[d]etermining a toll for road usage’ is also an
idea that can be performed by a human using a pen and paper (‘an idea of
itself’).” Id. In the Answer, the Examiner further explains that “the main
idea of the claimed invention is evaluation of the information collected from
a vehicle in order to determine infrastructure usage by the vehicle.” Ans. 4.
The Examiner finds that “[t]his evaluation could be performed mentally by a
human provided with the collected information.” Id. at 4–5.
Appellant notes that “[s]ince the rejection was sent, the USPTO has
issued the 2019 Revised Patent Subject Matter Eligibility Guidance.”
Appeal Br. 2. Appellant adds that, “[a]ccording to the 2019 Guidance,
except in ‘rare circumstance,’ ‘abstract ideas’ are limited to: (a)
mathematical concepts; (b) certain methods of organizing human activity;
and (c) mental processes.” Appeal Br. 2−3. Appellant argues that claims 1
and 15 do not recite any of these categories of abstract ideas. Id. at 2–3.
With respect to the “mental processes” category, Appellant urges that
“a human could not validate the transportation infrastructure usage by the
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vehicle using aggregate vehicle movement information, as required by claim
1[,] or at least not practically.” Appeal Br. 3. Appellant further argues in
the Reply Brief that “the Examiner does not rebut Appellant’s argument that
claims 1 and 15 could not be done in the human mind.” Reply Br. 1.
With respect to the Examiner’s conclusion in the Final Rejection that
claims 1 and 15 are directed to a certain method of organizing human
activity, we do not agree. The Examiner’s conclusion is based upon
language that does not appear in either claim — “determining a toll for road
usage.” Final Act. 6.
We also do not agree with the Examiner’s finding in the Final Office
Action that claims 1 and 15 recite “an idea that can be performed by a
human using a pen and paper,” to the extent it is premised upon language
that does not appear in either claim — “determining a toll for road usage.”
See Final Act. 6.
To the extent the Examiner is referring to “determin[ing]
infrastructure usage by the vehicle” as the mental process (see Ans. 3–4),
and to the extent the Examiner is specifically referring to the “assess[ing]”
and “validat[ing]” aspects of the claims as mental steps, we agree with the
Examiner that the assessing and validating functions can be performed
practically in the human mind.
Appellant’s arguments that the validating cannot be practically
performed in the mind are not persuasive, because claims 1 and 15 are not
limited to, say, a large set of obtained data that is validated. See Ans. 4
(“[The] Examiner respectfully disagrees that any ‘amount of data’ present in
the claims renders any claimed evaluation of data to be unable to be
practically performed in the human mind.”) (emphases in original). Thus,
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Appellant has not persuaded us of error in the Examiner’s finding that
claims 1 and 15 recite an abstract idea.

Step 2A, Prong Two
The Examiner finds that “[t]he limitations are instructions to
implement the abstract idea on a computer and require no more than a
generic computer to perform generic computer functions . . . .” Final Act.
2–3. The Examiner adds that the claimed “on-board unit” “is generally
recited and can merely be general purpose computers that perform basic
functions.” Id. at 4. In the Answer, the Examiner further explains that the
claimed “on-board unit” is a generic machine and the claimed “server”
“merely implements the abstract idea on a computer.” Ans. 5–6.
Appellant argues that, “even if the claims recite an abstract idea,
which the Examiner says is ‘the concept of determining a toll for a road
usage,’ the claims integrate that idea into a practical application because
determining a toll for road usage is a practical application itself.” Appeal
Br. 5. Appellant also argues that the claims recite “particular machines and
a particular technical environment” because “things occur in a server based
upon, not only information from the vehicle, but from other vehicles.” Id.
Appellant acknowledges that “tolls for road usage have been known for a
long time.” Id. at 6. However, Appellant urges that “the claims provide
several improvements, such as validating the usage by the vehicles based
upon other vehicle usage.” Id. (emphases added).
We agree with Appellant that the Examiner has not specifically
addressed Appellant’s argument (Appeal Br. 5, 6) that validating the usage
by a vehicle based upon other vehicle usage is an improvement that
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integrates the judicial exception into a practical application. We understand
Appellant to be referring to the claim phrase “using aggregate vehicle
movement information” as the other vehicle usage. The Examiner does not
specifically address Appellant’s argument that the server improves
technology by validating transportation infrastructure usage by using
aggregate vehicle movement information. We thus determine that Appellant
has shown an error in the Examiner’s Section 101 rejection of independent
claims 1 and 15.
Dependent Claims
The Examiner finds that the dependent claims “further narrow the
identified abstract idea of road tolling.” Final Act. 8. The Examiner adds
that “the limitations of claims 2 and 4–7 define how the toll is determined
for a vehicle with respect to the road usage[,] which further defines the
abstract idea.” Id.
As noted above, Appellant contends that independent claim 1 does not
recite a mental process because a human could not practically validate the
transportation infrastructure usage by the vehicle using aggregate vehicle
movement information, as required by claim 1. Appeal Br. 3. With respect
to the dependent claims, Appellant argues: “Many of the dependent claims
would be even more difficult (or even less practical), but the Examiner has
not analyzed these claims. The Examine[r] just treats the dependent claims
with a broad brush . . . .” Id. Appellant adds that “[e]ven if were possible
for a human to perform claim 1 (it is not), it would be completely
impractical for a human to perform claim 2 because of the amount of data.”
Id. at 4.
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In the Answer, the Examiner “disagrees that any ‘amount of data’
present in the claims renders any claimed evaluation of data unable to be
practically performed in the human mind.” Ans. 4 (emphases in original).
We agree with the Examiner that the dependent claims are not limited
to a large amount of data and therefore recite mental processes that can be
practically performed in the human mind. See Ans. 4–5. We also note that
only some of the dependent claims involve the concept of road tolling, as
asserted by the Examiner. In particular, dependent claims 5, 6, and 8–10
recite “usage fees,” which may be considered a fundamental economic
practice. Thus, Appellant has not shown that the Examiner erred in
determining that the claims recite an abstract idea.
Nevertheless, as with the independent claims, the Examiner does not
address Appellant’s argument that the dependent claims integrate any recited
abstract idea into a practical application by improving the technology,
specifically by validating transportation infrastructure usage using aggregate
vehicle movement information. See Appeal Br. 5, 6; Ans. 5–6. We thus
determine that Appellant has shown an error in the Examiner’s Section 101
rejection of dependent claims 2–11.

Conclusion regarding Rejection A
Based upon our review of the record, we find the Examiner has not
fully developed the record to establish that the claims do not integrate the
abstract idea into a practical application. For this reason, we are constrained
on this record to reverse the Examiner’s Rejection A under 35 U.S.C. § 101
of all claims 1–11 and 15 on appeal.

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Rejection B of Claims 1, 3–5, 7, and 15 under § 103
Appellant argues that the Examiner’s Rejection B of independent
claims 1 and 15 under 35 U.S.C. § 103, as being obvious over the
combination of Davidson and Grush, is in error. App. Br. 6–7. In particular,
Appellant urges that “the invention of Grush could not be used in the
Davidson system.” Appeal Br. 7.
In support, Appellant notes that “Davidson discloses a system for
determining road usage taxes for a fleet of vehicles [and] Grush discloses
that one can determine which lane each vehicle is using by comparing the
relative positions of the vehicles, rather than just the absolute positions of
the vehicles.” Id. at 6. Appellant contends that “Davidson could not be
modified to include this feature of Grush because a fleet would rarely (if
ever) have enough vehicles on the road in the same place at the same time
regularly to determine which vehicle is in which lane based upon their
relative locations.” Id. Appellant argues that “accurate specific lane
information would not be relevant to the Davidson system for determining
road usage taxes for a fleet of vehicles.” Id. Appellant urges that specific
lanes are not relevant to the geofences in Davidson because Davidson
(paragraph 4) determines that taxes are based upon the amount of fuel
consumed within certain geofences. Id.
The Examiner finds that Davidson teaches the limitations of claim 1,
except “wherein transportation infrastructure usage by the vehicle is
validated using aggregate vehicle movement information.” Final Act. 9.
The Examiner looks to Grush’s paragraph 77 and Figure 5 to provide the
“validating” teaching found missing from Davidson. Id. The Examiner
explains that paragraph 77 and Figure 5 of Grush “show that the system
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collects information from a group of vehicles that are in close proximity to
the targeted vehicle in order to verify the usage information.” Id. The
Examiner finds an artisan would have been motivated to modify Davidson
with Grush’s validation using aggregate vehicle movement information
(paragraph 77, Figure 5), because doing so would correct any bias or
inaccuracy in the collection of data. Id. The Examiner makes similar
findings for claim 15. Id. at 11–12.
Turning to the evidence, Grush discloses the following:
[Figure] 5 depicts an exaggerated and artificially tidy (random
variation is not depicted) illustration of a situation in which cars
104 traveling in an HOT lane produce journey logs 120 whose
absolute positions are biased but whose relative positions are
correct. Using data from a group (mob) of vehicles 122 that are
concurrent and co-located, statistical techniques allow
categorization of cars 104 into lanes of travel and correction for
any bias. This is intended to be used only in cases of ambiguity
or requirement of proof of charges.

Grush ¶ 77 (emphases added). Thus, Grush discloses validating
vehicle transportation infrastructure usage information (e.g., usage of
a HOT lane) based on aggregate vehicle movement information.
Both Davidson and Grush are from the same field of endeavor as
Appellant’s invention, i.e., tracking vehicle locations and use. See
Davidson, Abstract, ¶¶ 2, 33, 35; Grush, Abstract, Fig. 5, ¶¶ 66, 77. We
agree with the Examiner that one of ordinary skill in the art would have
understood that Davidson’s teachings of obtaining vehicle usage and
location information and assessing transportation infrastructure usage for
one or more fleet vehicles (or other vehicles) (e.g., Davidson ¶ 72) would
benefit from an approach that employs aggregate nearby vehicle usage to
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provide more accurate road usage reporting that would correct for any bias,
as taught by Grush, at paragraph 77.
We find that improved accuracy would generally be relevant to the
determination of usage taxes in Davidson (paragraph 2), and to collecting
more accurate road usage information in Grush. We emphasize that Grush,
at paragraph 66, specifically describes: “The key issues that this invention
addresses are cost, accuracy, reliability, flexibility and multiple concurrent
purposes.” (emphasis added). We note the Examiner cites to paragraphs 66,
75, and 77 of Grush to provide additional support for the finding of
motivation to combine. See Ans. 9.
We agree with the Examiner that Appellant has not persuasively
addressed the reasoning for combining Davidson with Grush: “to gather
accurate measurements and corrects any bias.” Ans. 9 (emphasis added).
As further explained by the Examiner in the Answer:
Contrary to appellant’s arguments, Davidson’s teaching may be
modified to use the position measurements of the group of
vehicles around the monitored vehicle to determine a more
accurate measurement of the location of the monitored vehicle
on the road taught by [Grush] since Davidson monitors vehicles
in a fleet of vehicles individually. The location measurements of
the vehicle inside a geofence taught by Davidson may be
improved using [Grush]’s teaching as illustrated above. One of .
. . ordinary skill in the art would be motivated to do so to gather
accurate measurements and corrects any bias ([Grush] para. 75,
77 and 66).
Ans. 9 (emphases added).
To the extent that Appellant may be implying that Davidson or Grush
“teaches away” from the claimed invention (Appeal Br. 4; Reply Br. 4), we
note that the “mere disclosure of alternative designs does not teach away.”
In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). A “teaching away”
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requires a reference to actually criticize, discredit, or otherwise discourage
the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004). Here, Appellant has not persuasively shown that Davidson or Grush
criticize, discredit, or otherwise discourage the claimed solution.
Appellant does not point to any evidence of record that shows
combining the teachings of Davidson and Grush in the manner found by the
Examiner (Final Act. 9; Ans. 9) would have been “uniquely challenging or
difficult for one of ordinary skill in the art” or would have “represented an
unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007).
Therefore, based upon a preponderance of the evidence, we are not
persuaded of error regarding the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness regarding the Examiner’s Rejection
B of independent claims 1 and 15.
Accordingly, we sustain the Examiner’s obviousness Rejection B of
claims 1 and 15, and claims 3–5 and 7, which were not argued separately.
See 37 C.F.R. § 41.37(c)(1)(iv).

Rejections C, D, E, and F under 35 U.S.C. § 103
The remaining pending dependent claims rejected under Rejections C,
D, E, and F were not argued separately. Arguments not made are considered
waived. See 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, for the reasons
explained above with respect to Rejection B, we sustain the Examiner’s
obviousness rejections C, D, E, and F of the remaining dependent claims on
appeal.
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CONCLUSIONS
We conclude the Examiner has not shown that claims 1–11 and 15,
rejected under 35 U.S.C. § 101, are directed to patent-ineligible subject
matter.
We also conclude that the Examiner did not err in rejecting claims
1–11 and 15 as obvious under 35 U.S.C. § 103, over the cited combinations
of prior art.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–11, 15 101 Eligibility 1–11, 15
1, 3–5, 7,
15
103 Davidson, Grush 1, 3–5, 7,
15

2 103 Davidson, Grush,
McCoy
2
6, 8 103 Davidson, Grush,
Wilson
6, 8
9, 11 103 Davidson, Grush,
McCoy
9, 11
10 103 Davidson, Grush,
McCoy, Hamilton
10
Overall
Outcome
1–11, 15

FINALITY AND RESPONSE
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
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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). See 37
C.F.R. § 41.50(f).
AFFIRMED