Robert J. Klein et al.

Patent Trials and Appeals Board

Aug 16, 2019

14947619 - (D) (P.T.A.B. Aug. 16, 2019)

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.
14/947,619 11/20/2015 Robert J. Klein 15-0729-USNP/0192.0040 9244
124834 7590 08/16/2019
MH2 TECHNOLOGY LAW GROUP, LLP (Boeing)
Timothy M. Hsieh
1951 KIDWELL DRIVE
SUITE 310
TYSONS CORNER, VA 22182
EXAMINER
SUMMERS, GEOFFREY E
ART UNIT PAPER NUMBER
2669
NOTIFICATION DATE DELIVERY MODE
08/16/2019 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):
docketing@mh2law.com
doreen@mh2law.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT J. KLEIN, TED L. JOHNSON, and
ANTHONY W. BAKER1
____________

Appeal 2018-009024
Application 14/947,619
Technology Center 2600
____________

Before JOSEPH P. LENTIVECH, SCOTT RAEVSKY, and CYNTHIA M.
HARDMAN, Administrative Patent Judges.

RAEVSKY, Administrative Patent Judge.

DECISION ON APPEAL

Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1, 2, 4–11, 14–17, and 19–23, all the
pending claims in the present application. See App. Br. 17–21 (Claims
Appendix). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellants identify The Boeing Company as the real party in interest.
App. Br. 3.
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THE CLAIMED INVENTION
Appellants’ invention generally relates to updating a portion of an
image where a change within the image has occurred. See Spec ¶ 1. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A method for obtaining an updated image, comprising:
receiving a first image having a resolution that is less
than or equal to a predetermined amount;
receiving a second image having a resolution that is
substantially the same as the first image, wherein the second
image is captured after the first image;
comparing the second image to the first image to identify
a plurality of common areas in both the first and second images,
wherein each common area comprises a plurality of pixels, and
wherein a probability of change in the common areas between
the first image and the second image is greater than a
predetermined threshold;
receiving a third image having a resolution that is greater
than or equal to the predetermined amount, wherein the third
image includes the common areas, and wherein the third image
is captured before the second image;
receiving a fourth image having a resolution that is
substantially the same as the third image in response to the
probability of change being greater than the predetermined
amount, wherein the fourth image is captured after the third
image, and wherein the fourth image includes at least one of the
common areas and has a total area that is less than a total area
of the third image;
comparing the fourth image to the at least one of the
common areas in the third image to identify a change between
the fourth image and the at least one of the common areas in the
third image; and
replacing a portion of the third image with the fourth
image in response to the change being identified.

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REJECTION
Claims 1, 2, 4–11, 14–17, and 19–23 stand rejected under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter. Final Act. 5.

ANALYSIS
I. Principles of Law
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’l, 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 id. 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. Kappos, 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
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mental processes (Gottschalk v. Benson, 409 U.S. 63, 67–68 (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 183 n.7 (quoting Corning v. Burden, 56
U.S. (15 How.) 252, 267-68 (1853))); 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 187; 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 turn 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. “A claim that recites an
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abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (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.
The U.S. Patent and Trademark Office (“PTO”) recently published
revised guidance on the application of § 101. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (USPTO Jan. 7,
2019) (“Guidance”). Under the 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 activities 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) (9th ed.
Rev. 08.2017, Jan. 2018)).
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:
(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 Guidance, 84 Fed. Reg. at 56.
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II. The Examiner’s Rejection
The Examiner determines that, although representative claim 12 is a
process, the claim is directed to a judicial exception: an abstract idea. Final
Act. 6. According to the Examiner, claim 1 is directed to the abstract idea of
“receiving image data, comparing them to identify changes, and
reorganizing the data based on the identified changes.” Id. The Examiner
also finds claim 1 “could be performed completely manually using printed
images.” Ans. 8. More generally, the Examiner appears to find claim 1
directed to a mental process. See Final Act. 5 (noting that the claimed
invention is “more similar to” the “[s]everal cases [that] . . . have found
concepts relating to processes of comparing data that can be performed
mentally abstract . . . and . . . [s]everal cases . . . [that] have found concepts
relating to processes of organizing information that can be performed
mentally abstract.”) (emphasis added). In concluding that claim 1 is
directed to a judicial exception, the Examiner also finds that the additional
elements are well-understood, routine, and conventional in the field. Final
Act. 7–8; Ans. 4–5.

III. Step 2A, Prong One (Judicial Exception)
Viewing the Examiner’s rejection through the lens of the Guidance,
we first consider whether the claim recites a judicial exception. Guidance,
84 Fed. Reg. at 51.

2 Appellants argue claims 1, 2, 4–11, 14–17, and 19–23 as a group. See
App. Br. 9–16. We select independent claim 1 as representative of claims 1,
2, 4–11, 14–17, and 19–23. See 37 C.F.R. § 41.37(c)(1)(iv).
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We determine that claim 1 recites a mental process because claim 1
broadly relates to receiving images and comparing images to identify
changes in images. Specifically, claim 1 recites “[a] method for obtaining
an updated image” that recites steps including: (1) “receiving a first image
. . . ,” (2) “receiving a second image . . . ,” (3) “comparing the second image
to the first image to identify a plurality of common areas in both the first and
second images. . . ,” (4) “receiving a third image . . . ,” (5) “receiving a
fourth image . . . ,” (6) “comparing the fourth image to the at least one of the
common areas in the third image to identify a change between the fourth
image and the at least one of the common areas in the third image,” and
“replacing a portion of the third image with the fourth image in response to
the change being identified.”
As drafted, these limitations, under their broadest reasonable
interpretation, recite a mental process that can be performed in the human
mind or using a pen and paper. See, e.g., CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372–73 (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). In
this case, these limitations encompass acts people can perform using their
minds or pen and paper because people can perform the “receiving” steps by
physically receiving images and the “comparing” steps by simply looking at
the different images.3 Similarly, the “replacing” step can be performed
manually by physically altering the received images.

3 Although we consider the claims as a group, we note that independent
claim 16’s computer limitations do not change the outcome. 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
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Appellants do not appear to challenge the Examiner’s characterization
of the abstract idea but instead appear to direct their arguments to the
practical application query and Alice’s inventive concept query, which we
address below under Step 2A, Prong 2, and Step 2B. See App. Br. 9–15.
Accordingly, for the aforementioned reasons, we agree with the Examiner
that claim 1 recites mental processes, and thus an abstract idea.

IV. Step 2A, Prong 2 (Integration into a Practical Application)
Under the Guidance, we now must determine if additional elements in
the claims integrate the judicial exception into a practical application
(see MPEP § 2106.05(a)-(c), (e)-(h)).
We discern no additional element (or combination of elements)
recited in Appellants’ representative claim 1 that integrates the judicial
exception into a practical application. See Guidance, 84 Fed. Reg. at 54–55
(“Prong 2”). For example, Appellants’ claimed additional elements (i.e.,
“[the first image] having a resolution that is less than or equal to a
predetermined amount,” “[the second image] having a resolution that is
substantially the same as the first image, wherein the second image is
captured after the first image,” “wherein each common area comprises a
plurality of pixels, and wherein a probability of change in the common areas
between the first and the second image is greater than a predetermined

computer and still found that the underlying, patent-ineligible invention
could be performed via pen and paper or in a person’s mind.”); see
also Revised Guidance, 84 Fed. Reg. at 52 n.14 (“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
processes category unless the claim cannot practically be performed in the
mind.”).
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threshold,” “wherein the third image includes the common areas, and
wherein the third image is captured before the second image,” and “[the
fourth image] having a resolution that is substantially the same as the third
image [and is received] in response to the probability of change being
greater than the predetermined amount, wherein the fourth image is captured
after the third image, and wherein the fourth image includes at least one of
the common areas and has a total area that is less than a total area of the
third image”) do not: (1) improve the functioning of a computer or other
technology; (2) are not applied with any particular machine (except for a
generic computer); (3) do not effect a transformation of a particular article to
a different state; and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h). Instead, these limitations merely serve to narrow
the recited abstract idea.
Appellants contend that, analogous to Trading Techs., the “claims
solve the problems of prior computer-based systems, related to speed,
accuracy, and usability, in the context of updating a portion of a satellite
image where a change within the imaged area has occurred.” App. Br. 9
(citing Trading Techs. Int’l Inc. v. CQG, Inc., 675 Fed. App’x. 1001 (Fed.
Cir. 2017) (nonprecedential)). Specifically, Appellants contend their
“invention can identify and update a portion of a satellite image that has a
high probability of change with a new, high-resolution portion, whereas
prior art systems and methods do not.” Id. Appellants contrast their
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invention with prior art systems that “do this manually, which can be ‘very
difficult and time consuming.’” Id. (citing Spec. ¶ 3).
Appellants’ reliance on Trading Techs. is misplaced. Claim 1 does
not solve a problem of “prior computer-based systems,” as Appellants
allege. Rather, the Specification states that “high resolution images may be
very expensive,” and it may be “very difficult and time consuming to
manually compare the old and new images to determine if (and where) one
or more changes . . . have occurred.” Spec. ¶¶ 2, 3. Unlike Trading Techs.,
which solved a “problem[] of prior graphical user interface[s]” with “a
specific improvement to the way computers operate,” claim 1’s additional
limitations solve a prior manual image comparison problem. See Trading
Techs., 675 Fed. App’x. at 1004–05.
Appellants also contend claim 1 is similar to the claims in McRO
because it “provide[s] for rules-based automation of a process previously
done manually.” App. Br. 9 (citing McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016)). Appellants argue claim 1
is directed to an improvement in computer-related technology because the
Specification notes, “it can be difficult and time consuming to manually
compare the old and new images.” Id. at 10 (quoting Spec. ¶ 3).
In McRO, the Federal Circuit concluded that the claim, when
considered as a whole, was directed to a “technological improvement over
the existing, manual 3-D animation techniques” through the “use [of] limited
rules . . . specifically designed to achieve an improved technological result in
conventional industry practice.” McRO, Inc., 837 F.3d at 1316.
Specifically, the Federal Circuit found that the claimed rules allow
computers to produce realistic lip synchronization and facial expressions in
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animated characters that previously could only be produced by human
animators, and those rules were limiting because they defined morph weight
sets as a function of phoneme sub-sequences. Id. at 1313 (internal citations
omitted).
We find no evidence of record here to support the argument that the
present situation is like the one in McRO where computers were unable to
make certain subjective determinations, i.e., regarding morph weight and
phoneme timings, which could only be made prior to the claimed invention
by human animators. Here, although the claimed process may improve an
image, it does not achieve an improved technological result. We see no
parallel between the limiting rules described in McRO and the highly
generalized limitations recited in Appellants’ claims.
Appellants further contend claim 1 is similar to the claims in Enfish
because it “address[es] a problem with conventional, technological software
processes, and solve[s] it with a software solution.” App. Br. 11–12 (citing
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016)).
The claims at issue in Enfish were directed to a specific type of data
structure, a self-referential table for a computer database, designed to
improve the way a computer carries out its basic functions of storing and
retrieving data. See Enfish, 822 F.3d at 1335–36. In rejecting
a § 101 challenge, the court in Enfish held that “the plain focus of the claims
is on an improvement to computer functionality itself, not on economic or
other tasks for which a computer is used in its ordinary capacity.” Id. at
1336.
Here, Appellants do not point to anything in the claim that resembles
the inventive self-referential data structure at issue in Enfish. Appellants
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also do not direct our attention to anything in the Specification to indicate
that the invention provides an improvement in a computer’s technical
functionality. Rather, as Appellants concede, the claimed invention
improves a manual process. See App. Br. 10. Simply using a computer to
gain efficiency over a manual process is not sufficient to distinguish a claim
from a patent-ineligible abstract idea. See OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“[R]elying on a computer to
perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible.”).
Appellants also contend claim 1 recites significantly more than an
abstract idea because claim 1 is similar to the claims in AmDocs. App. Br.
12 (citing Amdocs (Israel) Ltd. v. Openet Telecom., Inc., 841 F.3d 1288
(Fed. Cir. 2016)). “In particular,” Appellants contend, claim 1 “solves the
technological problem of updating a portion of a satellite image where a
change within the imaged area is likely to have occurred.” Id. (citing Spec.
¶ 1). Appellants conclude that this is “an unconventional technological
solution to a technological problem.” Id. But Amdocs is inapposite. Claim
1 does not recite anything akin to the “distributed architecture” of Amdocs,
where improved “distributed data gathering, filtering and enhancements . . .
enable[d] load distribution” in a network. See Amdocs, 841 F.3d at 1300.
Appellants next contend claim 1 is similar to the claims in Finjan
because “the present claims do not merely recite a result, but a specific
process to achieve that result.” App. Br. 13 (citing Finjan, Inc. v. Blue Coat
Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018)). But claim 1 does not recite
anything remotely similar to the “virus screening” claims of Finjan. See
Finjan, 879 F.3d at 1304.
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Appellants also contend claim 1 is similar to the claims in Research
Corp. because “they recite processing to produce an enhanced depiction of a
real-world object.” App. Br. 13–14 (citing Research Corp. v. Microsoft
Corp., 627 F.3d 859, 869 (Fed. Cir. 2010)). However, not only is claim 1
dissimilar from Research Corp.’s image processing claims, Appellants’
argument is not commensurate with the scope of the claim. See Research
Corp., 627 F.3d at 869. Claim 1 recites first, second, third, and fourth
“image[s],” not “an enhanced depiction of a real-world object.” Appellants
point us to no evidence in the Specification or otherwise that compels a
construction of “image” to include a “depiction of a real-world object.”
Finally, Appellants assert claim 1 recites an unconventional
technological solution because “the rejections under 35 U.S.C. § 103 have
been overcome.” App. Br. 12–13. This argument is irrelevant. Even if we
were to assume that the techniques claimed are “[g]roundbreaking,
innovative, or even brilliant,” that is not enough for eligibility. Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
Nor is it enough for subject-matter eligibility that claimed techniques be
novel and nonobvious in light of prior art, passing muster under 35 U.S.C.
§§ 102 and 103. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an
abstract idea. The search for a § 101 inventive concept is thus distinct from
demonstrating § 102 novelty.”); Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (same for obviousness). The
claims here are ineligible because their innovation is an innovation in
ineligible subject matter.
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For at least these reasons, we determine that claim 1 does not integrate
the judicial exception into a practical application and, therefore, is directed
to the recited abstract idea (e.g., mental processes).

V. Step 2B (Inventive Concept)
Because we find that the claims are directed to an abstract idea, we
next consider whether the claims include additional limitations, such that the
claims amount to significantly more than the abstract idea.
As we noted above, the Examiner also finds that the additional
elements are well-understood, routine, and conventional in the field. Final
Act. 7–8; Ans. 4–5. Appellants do not directly challenge the Examiner’s
conclusion, apart from arguing that the claims are “unconventional” for the
reasons set forth above. However, as we explained above, the additional
limitations merely narrow the recited abstract ideas. Accordingly, we find
that there are no additional limitations that cause the claims to amount to
significantly more than the abstract idea. Thus, we determine no element or
combination of elements recited in claim 1 contains any “inventive concept”
or adds anything “significantly more” to transform the abstract concept into
a patent-eligible application.
Because Appellants’ independent claim 1 is directed to a patent-
ineligible abstract concept, does not include additional elements that
integrate the judicial exception into a practical application, and does not
recite significantly more than the abstract idea to which the claim is directed,
we sustain the Examiner’s rejection of claims 1, 2, 4–11, 14–17, and 19–23,
which Appellants argued as a group, under 35 U.S.C. § 101 as being directed
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to non-statutory subject matter in light of Alice, its progeny, and the
Guidance. See supra n.2.

DECISION
We affirm the Examiner’s § 101 rejection of claims 1, 2, 4–11, 14–17,
and 19–23.
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).

AFFIRMED