International Business Machines CorporationDownload PDFPatent Trials and Appeals BoardApr 1, 20212020000615 (P.T.A.B. Apr. 1, 2021) Copy Citation 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. 14/705,574 05/06/2015 Ying Liu AUS920150094US1 8615 65362 7590 04/01/2021 TERRILE, CANNATTI & CHAMBERS, LLP IBM Austin P.O. BOX 203518 AUSTIN, TX 78720 EXAMINER FERNANDEZ RIVAS, OMAR F ART UNIT PAPER NUMBER 2128 NOTIFICATION DATE DELIVERY MODE 04/01/2021 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): USPTO@dockettrak.com tmunoz@tcciplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YING LIU and LUCAS C. VILLA REAL Appeal 2020-000615 Application 14/705,574 Technology Center 2100 Before BRADLEY W. BAUMEISTER, ERIC B. CHEN, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–6, 8–13, and 15–19, which are all of the claims pending in the application. We have jurisdiction 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). Appellant identifies International Business Machines Corporation as the real party in interest. Appeal Br. 1. Appeal 2020-000615 Application 14/705,574 2 TECHNOLOGY “Road salt is often used as a de-icing agent in cold weather locations to prevent the formation of road ice.” Spec. ¶ 1. However, because road salt typically includes other chemical components or impurities, “road salt can provide a major non-point source of pollutants that can have severe impacts on surface and groundwater quality.” Id. The present application relates to assessing the environmental impact of road salt on a watershed area using topological information. Id. ¶ 2, Title. REPRESENTATIVE CLAIM Claim 1 is representative and reproduced below: 1. A method, in an information handling system comprising a processor and a memory, for assessing environmental effect of road salt distribution in a watershed area, the method comprising: receiving, by the system, a topographical model for the watershed area; computing, by the system, a salt loading coefficient metric for each of a plurality of target points in the watershed area using a specified catchment area and local hydraulic gradient extracted from the topographical model; mapping, by the system, each salt loading coefficient metric to a corresponding road segment in the watershed area to generate a salt loading coefficient map to provide a first-order model estimation of spatial differentiation on the environmental effect of road salt distribution in the watershed area; and computing, by the system, a total salt contribution to a selected drainage point from each road located in the watershed area by integrating a total salt contribution value M = ∫ m(x) ∙ c(x)dxL , where L specifies road segments for each road located in the watershed area, m(x) specifies a salt dispersion rate along each road L, and c(x) specifies the salt loading coefficient metric corresponding to each road segment in the watershed area contained in the salt loading coefficient map. Appeal 2020-000615 Application 14/705,574 3 REJECTION Claims 1–6, 8–13, 15–19 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Ans. 3; Final Act. 2. ANALYSIS The Supreme Court has set forth a two part test for § 101 to determine whether the subject matter of a claim is patent eligible: (1) “whether the claims at issue are directed to” “laws of nature, natural phenomena, and abstract ideas” and (2) “whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). “Eligibility under 35 U.S.C. § 101 is a question of law, based on underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018). In 2019, the U.S. Patent & Trademark Office (“USPTO”) expanded on the Supreme Court’s test with revised guidance. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”); USPTO, October 2019 Update: Subject Matter Eligibility, available at https://www.uspto.gov/sites/default/files/documents/ peg_oct_2019_update.pdf (“Oct. Update”). Under that Guidance, we use the following steps to determine whether a claim recites the following items: Appeal 2020-000615 Application 14/705,574 4 USPTO Step Does the claim recite ___? MPEP § 1 A process, machine, manufacture, or composition of matter 2106.03 2A, Prong 1 A judicial exception, such as a law of nature or any of the following groupings of abstract ideas: 1) Mathematical concepts, such as mathematical formulas; 2) Certain methods of organizing human activity, such as a fundamental economic practice; or 3) Mental processes, such as an observation or evaluation performed in the human mind. 2106.04 2A, Prong 2 Any additional limitations that integrate the judicial exception into a practical application 2106.05(a)– (c), (e)–(h) 2B Any additional limitations beyond the judicial exception that, alone or in combination, were not “well-understood, routine, conventional” 2106.05(d) See Guidance, 84 Fed. Reg. at 52, 55, 56. The Final Rejection and Appeal Brief were filed prior to the Guidance. The Answer, however, sets forth a new ground of rejection applying the Guidance. See Ans. 3. Here, there is no dispute under USPTO Step 1, so we begin our analysis with Prong 1 of USPTO Step 2A. The last three steps of claim 1 recite: computing . . . a salt loading coefficient metric for each of a plurality of target points in the watershed area using a specified catchment area and local hydraulic gradient extracted from the topographical model; mapping . . . each salt loading coefficient metric to a corresponding road segment in the watershed area to generate a salt loading coefficient map to provide a first-order model estimation of spatial differentiation on the environmental effect of road salt distribution in the watershed area; and Appeal 2020-000615 Application 14/705,574 5 computing . . . a total salt contribution to a selected drainage point from each road located in the watershed area by integrating a total salt contribution value M = ∫ m(x) ∙ c(x)dxL , where L specifies road segments for each road located in the watershed area, m(x) specifies a salt dispersion rate along each road L, and c(x) specifies the salt loading coefficient metric corresponding to each road segment in the watershed area contained in the salt loading coefficient map. We agree with the Examiner that these steps all recite “a mental process, given that it is a relatively simple integral that could easily be done mentally or with pen and paper.” Ans. 3. We further agree with the Examiner that the last “computing” step recites a mathematical formula, specifically calculating the value M using the specified integral. Id. Appellant provides no reason why these steps (including the math) could not be performed in the human mind. As the Federal Circuit has said, “we continue to treat analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) (quotation omitted). Thus, the claim recites mental steps and mathematical concepts for the abstract idea of “assessing environmental effect of road salt distribution in a watershed area.” Final Act. 2; Appeal Br. 11 (preamble of claim 1). For Prong 2 of USPTO Step 2A, the additional limitations beyond the abstract idea are “receiving . . . a topographical model for the watershed area” and that each step is performed “by the system,” specifically by “an information handling system comprising a processor and a memory” as recited in the preamble. Appeal 2020-000615 Application 14/705,574 6 We agree with the Examiner that the “receiving” step “represents insignificant extra-solution data gathering” that “fails to integrate the abstract idea into a practical application.” Ans. 4. The Federal Circuit has held that “the practices of collecting, analyzing, and displaying data, with nothing more, are practices whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas.” FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1097–98 (Fed. Cir. 2016) (quotation omitted). We further agree with the Examiner that performing the steps “by the system” does not integrate the abstract idea into a practical application. As the Supreme Court has said, “simply implementing a mathematical principle on a physical machine, namely, a computer, [is] not a patentable application of that principle.” Mayo, 566 U.S. at 84. Thus, claim 1 is not integrated into a practical application. For USPTO Step 2B, we agree with the Examiner that the additional limitations beyond the abstract idea (i.e., data-gathering and performing the steps on a processor and memory), whether considered alone or as a whole, were well-understood, routine, and conventional. E.g., FairWarning, 839 F.3d at 1097–98. For example, the Examiner correctly cites the Specification as disclosing that the processor and memory can be any generic processor or memory. Ans. 5–6 (citing Spec. ¶¶ 10, 14, 21, 23, 31). Moreover, under Supreme Court precedent, “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent- eligible invention.” Alice, 573 U.S. at 223. Thus, claim 1 is directed to an abstract idea without significantly more. Appeal 2020-000615 Application 14/705,574 7 Appellant argues that “the 2019 PEG Update expressly emphasizes that a claim ‘recites’ a judicial exception when the judicial exception is ‘set forth’ or ‘described’ in the claim” but that “none of these terms – ‘recites,’ ‘set forth’ or ‘described’ – are used in the rejection analysis.” Reply Br. 2. At best, this argument would be a petitionable matter (i.e., not appealable to the Board) as to whether examiners are procedurally required to use the specific word “recites.” See MPEP § 1201. Substantively, Appellant’s argument is not persuasive. The Examiner quotes specific limitations and then says each specific limitation is “identified as” a mental process or “covers” a mental process or mathematical formula. Ans. 3. This is more than sufficient to meet the Examiner’s substantive burden, particularly when Appellant fails to provide any substantive reason how the quoted limitations are not a mental process or mathematical formula. For example, on its face, the limitation “M=∫ m(x)∙c(x)dxL ” is a mathematical formula, and hence, claim 1 recites a mathematical formula. Appellant also argues that “the rejection analysis fails to consider the claim ‘as a whole’” because certain portions of claim “were not addressed by the rejection analysis under Step 2B.” Reply Br. 3–4 (emphasis omitted). However, as discussed above, the entirety of the “mapping” and two “computing” steps recite an abstract idea with the sole exception of the steps being performed “by the system.” Thus, the only additional limitations beyond the abstract idea considered in Step 2B are “by the system” and the “receiving” step, which as discussed above the Examiner correctly determined are merely a generic computer and insignificant pre-solution Appeal 2020-000615 Application 14/705,574 8 data-gathering and hence do not render the claim patent eligible, regardless of whether considered individually or as a whole. Finally, Appellant argues that “the rejection analysis has improperly grouped multiple abstract ideas into the characterization of the claims” when only one is permissible. Reply Br. 6. Appellant does not cite any support for this argument, and it is directly contrary to Federal Circuit precedent: “Adding one abstract idea . . . to another abstract idea . . . does not render the claim non-abstract.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017). Accordingly, we sustain the Examiner’s rejection of claim 1, and claims 2–6, 8–13, and 15–19, which Appellant does not argue separately. See Appeal Br. 4–9; Reply Br. 1–6; 37 C.F.R. § 41.37(c)(1)(iv). DECISION SUMMARY The following table summarizes the outcome of each rejection: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–6, 8–13, 15–19 101 Eligibility 1–6, 8–13, 15– 19 TIME TO RESPOND No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.36(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation