Sergio Schulte. De Oliveira et al.

Patent Trials and Appeals Board

Jan 15, 2020

14212719 - (D) (P.T.A.B. Jan. 15, 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.
14/212,719 03/14/2014 Sergio Schulte de Oliveira CRN 694 PA 3257
29673 7590 01/15/2020
STEVENS & SHOWALTER LLP
7019 CORPORATE WAY
DAYTON, OH 45459-4238
EXAMINER
BEHNCKE, CHRISTINE M
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
01/15/2020 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):
PTO@sspatlaw.com
ssllp@speakeasy.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SERGIO SCHULTE de OLIVEIRA,
BENJAMIN J. PURRENHAGE, and PHILIP W. SWIFT

____________

Appeal 2018-007167
Application 14/212,719
Technology Center 3600
____________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 1–16, claims 17–23 having been
withdrawn. 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. The Appellant identifies the real party in interest as
“Crown Equipment Corporation.” Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The Appellant’s invention “relates in general to measurements of
industrial vehicle usage, and in particular, to the measurement and
normalization of industrial vehicle work for comparison and analysis.”
Spec. ¶ 2.
Claim 1 is the only independent claim on appeal, is representative of
the subject matter on appeal, and is reproduced below (with added
bracketing for reference):
1. A method of normalizing industrial vehicle
performance data, comprising:
[(a)] establishing at least one category where:
each category is associated with a distinct,
measureable activity capable of being performed by an
industrial vehicle, and
each category is characterized by at least one
parameter;
[(b)] electronically collecting data from an industrial
vehicle corresponding to actual vehicle use, where the collected
data satisfies at least one parameter associated with each
category;
[(c)] accumulating the electronically collected data
according to each category;
[(d)] extracting, with a battery sensor, battery information
from a battery coupled to the industrial vehicle so as to measure
actual energy consumed by the industrial vehicle during the
vehicle use for which data is electronically collected;
[(e)] creating a battery usage history from the extracted
battery information;
[(f)] associating for each category, a measure of work
performed by that category as a function of energy consumed in
performing that work by correlating the collected data
accumulated into each category as a function of energy
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consumed in performing the measurable activity associated with
that category from the battery usage history; and
[(g)] providing an indication of the measure of work
performed by the industrial vehicle based upon the accumulated
data.
Appeal Br. 21 (Claims App.).
THE REJECTION
Claims 1–16 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception without significantly more.

OPINION
35 U.S.C. § 101 Framework
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. 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 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. Kappos, 561 U.S. 593, 611 (2010)
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(“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 (Gottschalk v. Benson, 409 U.S. 63, 67 (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.
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 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
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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 (internal 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. (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.
After the Appellant’s briefs were filed and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (“USPTO”) published revised
guidance on the application of § 101. 2019 REVISED PATENT SUBJECT
MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Mayo/Alice framework by
(1) providing groupings of subject matter that are considered an abstract
idea; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
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or after January 7, 2019. Id.2 Under the 2019 Revised 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); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (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 2019 Revised Guidance, 84 Fed Reg. at 54, 56.
Step One of the Mayo/Alice Framework
Reciting a Judicial Exception
Under the first step of the Mayo/Alice framework and Step 2A,
Prong 1 of the 2019 Revised Guidelines, 84 Fed. Reg. at 54, the Examiner
determines that claim 1 is
directed to the abstract idea of normalizing industrial vehicle
performance data, as evidenced by the claim language found in

2 The 2019 Revised Guidance supersedes MPEP § 2106.04(II) and also
supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet
Identifying Abstract Ideas.” See 2019 Revised Guidance, 84 Fed. Reg. at 51
(“Eligibility-related guidance issued prior to the Ninth Edition, R-08.2017,
of the MPEP (published Jan. 2018) should not be relied upon.”).
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claim 1, which is collecting information, analyzing it and
displaying certain results of the collection and analysis (Electric
Power Group); Obtaining and comparing intangible data
(CyberSource); organizing information through mathematical
correlations (Digitech).”
Final Act. 7 (emphases omitted). When viewed through the lens of the 2019
Revised Guidance, the Examiner’s analysis depicts the claimed subject
matter as a “[m]ental process[]—[a] concept[] performed in the human mind
(including an observation, evaluation, judgment, opinion)” involving
mathematical concepts. 2019 Revised Guidance, 84 Fed. Reg. at 52
(footnotes omitted).
The Appellant disagrees and contends that “claim 1 is directed to a
specific way to compute a measure of work” and “improves the existing
technological process of measuring actual work performed by industrial
vehicles in a way that is vehicle independent.” Appeal Br. 13. For at least
the following reasons, we disagree.
Before determining whether the claim at issue is directed to an
abstract idea, we first determine to what the claim is directed. The Federal
Circuit has explained that “the ‘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)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See id. at 1335–36.
Here, it is clear from the Specification, and the claim language, that the
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focus of claim 1 is on an abstract idea, and not on any improvement to
technology and/or a technical field.
The Specification provides for “NORMALIZING PERFORMANCE
DATA ACROSS INDUSTRIAL VEHICLES.” Spec., Title. In the
“Background” section, the Specification discusses that “[w]ireless strategies
may be deployed by business operations . . . to improve the efficiency and
accuracy of business operations . . . [and] to avoid the insidious effects of
constantly increasing labor and logistics costs.” Id. ¶ 3. Further, workers
utilize industrial vehicles to move around operators’ facilities. Id. ¶ 4.
“However, disruptions in the operation of such materials handling vehicles
impact the ability of the management system and corresponding wireless
strategy to obtain peak operating efficiency.” Id. Existing conventional
software and systems “do not account for the industrial vehicles required to
perform the work required to move the items about the operator’s facility.”
Id. Thus, the claimed invention “normaliz[es] performance data for the
operation of industrial vehicles” so as to be “useful in evaluating industrial
vehicles based upon different manufacturers, makes, models, etc.” (id. ¶ 18)
and to create a “standardized and consistent unit of measure” so that
“comparative analysis (cost, efficiency or both) may be performed for
aspects such as fleet operation, operational efficiency, team efficiency, and
industrial vehicle operation” (id. ¶ 19). The Specification does not provide a
definition for the term “normalizing.”
Consistent with the disclosure, claim 1 recites “[a] method of
normalizing industrial vehicle performance data, comprising:”
(a) establishing at least one category, each category associated with a
measureable activity characterized by at least one parameter;
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(b) “electronically collecting data from an industrial vehicle,” the data
corresponding to actual vehicle use and satisfying at least one parameter
associated with each category; (c) “accumulating the electronically collected
data according to each category”; (d) “extracting, with a battery sensor,
battery information . . . to measure actual energy consumed by the industrial
vehicle”; (e) “creating a battery usage history from the extracted battery
information”; (f) “associating for each category, a measure of work
performed by that category as a function of energy consumed in performing
that work,” the associating performed “by correlating the collected data
accumulated into each category as a function of energy consumed in
performing the measurable activity associated with that category from the
battery usage history”; and (g) “providing an indication of the measure of
work performed by the industrial vehicle based upon the accumulated data.”
Appeal Br. 21 (Claims. App). None of the limitations are recited as being
performed by an apparatus, and thus can all be performed manually and/or
mentally. Limitation (d) extracts information with a battery sensor, but does
not specify whether a user extracts information using the sensor or whether
the sensor itself extracts information. Further, although the Specification
discusses a generic computing environment (see Spec. ¶¶ 22–25), no such
computing system is claimed. Moreover, all sensors described (see Spec.
¶ 31) are generic to the attribute sensed and are only described as sampling
characteristics. This limitation is therefore no more than the conceptual idea
of monitoring battery data using generic sensors in accord with their
conventional operation, devoid of any particular technological
implementation for doing so.
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When considered collectively and under the broadest reasonable
interpretation, the limitations of claim 1 recite a method for normalizing
industrial vehicle performance data by associating a measure of work as a
function of energy based on collected data and presenting the measure.3
Although there is no provided definition for normalizing, the ordinary and
customary meaning of the term as used in this context is to make or reduce
data to a norm or standard. See Merriam-Webster Online Dictionary,
https://www.merriam-webster.com/dictionary/normalize, retrieved Jan. 3,
2020.
Limitation (a) of establishing a category is recited functionally
without technical or technological details on how the categories are
established. The Appellant directs attention to the specific types of
categories, measurable activity, and parameter (see Appeal Br. 5, nn. 2–5),
but does not direct attention to where the Specification discusses how the
establishing is performed. Not seeing any such details in the Specification,
we construe the establishing of categories as being some form of organizing
data, a mental step. See Electric Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) (“[W]e have treated analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes”). Limitations (b), (c), and (d)
of collecting, accumulating, and extracting data are steps of gathering
information, an activity ordinarily done in normalizing data and an extra-

3 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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solution activity. See In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en
banc), aff’d sub nom Bilski v. Kappos, 561 U.S. 593 (2010) (characterizing
data gathering steps as insignificant extra-solution activity). We note that
limitation (d) of extracting data is recited functionally without any specifics
on how, technologically, the sensor extracts data or is used to extract data,
and the Specification provides no further detail. See, e.g., Spec. ¶¶ 26, 31,
44, 52, 53, Appeal Br. 5, nn. 9–11. Limitation (e) of creating a history is
recited functionally without technical or technological details on how the
history is created. As support for this limitation, the Appellant directs
attention to paragraphs 30 and 45 of the Specification (Appeal Br. 5, n. 12)
that provide for collecting usage history from the battery monitor. As such,
we construe the creating of a history as collecting data, an activity ordinarily
done in normalizing data and an extra-solution activity. Limitation (f) of
associating a measure of work is also recited functionally without technical
or technological details on how the measure of work is associated. The
Appellant directs attention to the Abstract and paragraphs 5, 37, 45, and 52
of the Specification as support for this limitation. Id. at 5, n. 13, 14. These
portions provide no further details. As such, we construe the associating of a
measure of work that is done by correlating data as a form of analysis, which
is mental process or a mathematical formula.
Thus, the limitations of claim 1 recite a method for making and
reducing industrial vehicle performance data to a norm of a measure of work
by performing mental steps and/or mathematical formulas, and presenting
the results. This is similar to the concepts found abstract in Univ. of Fla.
Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366–68 (Fed. Cir.
2019 (claim for standardizing data to be conveyed to a bedside device for
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graphical display was directed to the abstract idea of “collecting, analyzing,
manipulating, and displaying data”), Intellectual Ventures I LLC v. Capital
One Fin. Corp., 850 F.3d 1332, 1339–40 (Fed. Cir. 2017) (claim for
manipulating XML documents by organizing, identifying, mapping,
defining, and modifying data was directed to the abstract idea of “collecting,
displaying, and manipulating data”), and Electric Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1351–54 (Fed. Cir. 2016) (claim for detecting
events by receiving, detecting, analyzing, displaying, accumulating, and
updating data, and deriving a composite indicator from that data was
directed to the abstract idea of “collecting information, analyzing it, and
displaying certain results of the collection and analysis”).
For at least the reasons above, we disagree with the Appellant’s
contention that “the claimed invention is not analogous to Electric Power
Group, and in fact, is opposite Electric Power Group.” Appeal Br. 14; see
also id. at 15. We also disagree that the claim cannot be performed in the
human mind (see id. at 16), because, as noted above, the claim recites no
structure for performing the functions of establishing a category, collecting,
and accumulating, data, associating a measure of work, and providing an
indication. And, although the extraction of data requires a sensor, the claim
recites that data can be extracted, i.e., collected, manually using a data.
Accordingly, we conclude the claim recites a mental process including
evaluations, which is one of the groupings of abstract ideas identified in the
2019 Revised Guidance, 84 Fed. Reg. at 52.
Integration into a Practical Application
Under Step 2A, Prong 2 of the 2019 Revised Guidance, 84 Fed. Reg.
at 54, we look to whether the claim “appl[ies], rel[ies] on, or use[s] the
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judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception,” i.e., “integrates a judicial exception
into a practical application.” Here, the only additional elements recited in
claim 1 beyond the abstract idea are a battery sensor, battery, and industrial
vehicle. These elements are described generically in the Specification (see,
e.g., Spec. ¶¶ 26, 31, 44; Fig. 1), and are used to extract data and as the
particular field in which the method is employed.
The Appellant contends that “[t]he claimed invention provides a
particular (and technical) solution to a particular problem.” Appeal Br. 13.
The Appellant argues that the claim is like McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), because “the claimed
invention is directed to the specific way of normalizing industrial vehicle
data, and not merely to a result to be achieved.” Appeal Br. 14; see also id.
at 13. The Appellant also argues that “the claimed invention provides an
inventive technology to carry out the invention,” such as by defining a
category, recording measurable activity, and using a battery sensor. Id.
at 15. Thus, the Appellant contends, “the claimed invention focuses on a
specific improvement (correlating the collected data accumulated into each
category as a function of energy consumed in performing the measurable
activity associated with that category from the battery usage history) on
industrial vehicles.” Id. at 19. When viewed through the lens of the 2019
Revised Guidance, the Appellant contends that under Prong Two, the
elements of claim 1 integrate the abstract idea into a practical application
because the combination of the elements “reflects an improvement in the
functioning of a computer, or an improvement to other technology or
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technical field.” 84 Fed. Reg. at 55 (citing DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). We disagree.
In DDR Holdings, the Federal Circuit determined that the claims
addressed the problem of retaining website visitors who, if adhering to the
routine, conventional functioning of Internet hyperlink protocol, would be
transported instantly away from a host’s website after clicking on an
advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257.
The Federal Circuit, thus, held that the claims were directed to statutory
subject matter because they claim a solution “necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” Id. The court cautioned that “not all claims
purporting to address Internet-centric challenges are eligible for patent.” Id.
at 1258. And the court contrasted the claims to those at issue in
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), in that, in
DDR Holdings, the computer network was not operating in its “normal,
expected manner” and the claims did not “recite an invention that is []
merely the routine or conventional use of the Internet.” Id. at 1258–59.
Here, the Appellant contends that the problem being solved is “being
able to evaluate the work performed by various industrial vehicles.” Appeal
Br. 13. However, being able to evaluate work performed by vehicle is not a
problem necessarily rooted in computer or other technology. Rather, it is a
problem rooted in “comparative analysis (cost, efficiency or both)” that is
used for “fleet operation, operational efficiency, team efficiency, and
industrial vehicle operation” (Spec. ¶ 19), i.e., business problems existing
prior to computer technology.
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Also, unlike DDR Holdings, here, the purported solution of
normalizing data by evaluating extracted data involves the use of generic
components performing in their ordinary capacities. The sensor to extract
data is a generic sensor operating in its ordinary capacity to monitor data.
See, e.g., Spec. ¶ 26. The claim does not specify a particular method by
which the data are extracted. That the claimed technique is performed in the
field of industrial vehicles with batteries simply limits the use of the abstract
idea to a particular technological environment. “The Supreme Court and
[the Federal Circuit] have repeatedly made clear that merely 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), citing
Alice, 573 U.S. at 222; Mayo, 566 U.S. at 71; Bilski, 561 U.S. at 612,
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014). The
Appellant does not direct our attention to, and we do not see, where the
Specification describes the sensor, battery, or vehicle acting in an
unconventional manner to further the desired solution of normalizing data
based on a measure of work and displaying that measure. The Appellant
also does not direct our attention to anything in the Specification to indicate
that the invention provides a technical improvement to the sensor, battery, or
vehicle.
Regarding McRO, the claims there were directed to a specific
improvement in computer animation and used rules to automate a subjective
task of humans to create a sequence of synchronized, animated characters.
See McRO, 837 F.3d at 1314–15. Unlike Flook, Bilski, and Alice, it was not
the use of the computer, but the incorporation of the rules that improved an
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existing technological process. Id. at 1314. Here, there is no such
improvement to technology or a technological process. The Appellant does
not assert an improvement in the technical or technological aspects of
establishing, collecting, accumulating, creating, associating, and providing
data. Rather, any improvement lies in the analysis of the data, i.e., in the
ability to evaluate work performed (see Appeal Br. 13). This alleged
improvement lies in the abstract idea itself, not to any technological
improvement. See BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281,
1287–88 (Fed. Cir. 2018). The Appellant also does not direct our attention
to anything in the Specification to indicate that the invention provides a
technical improvement in the analysis or display of data or that claim 1
incorporates rules to automate a subjective task of humans, similar to those
in McRO.
Accordingly, we conclude claim 1 does not contain an element that
imposes a meaningful limit on the abstract idea that integrates the abstract
idea into a practical application.
Thus, we are not persuaded of error in the Examiner’s determination
that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework
Under the second step in the Alice framework (corresponding to Step
2B of the 2019 Revised Guidance), we find supported the Examiner’s
determination that the limitations of claim 1, taken individually and as an
ordered combination, do not amount to significantly more than the judicial
exception. See Final Act. 7–8.
The Appellant argues that the claim elements amount to significantly
more than the abstract idea because, like BASCOM Global Internet Svcs.,
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Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), “the claimed
invention expressly recites non-conventional elements in a non-generic
arrangement.” Appeal Br. 18; see also id. at 19–20. However, the
Appellant does not show how the claim here is similar to BASCOM’s
“particular arrangement of elements [that] is a technical improvement over
prior art ways of filtering such content.” 827 F.3d at 1350. The patent at
issue in BASCOM “claim[ed] a technology-based solution (not an abstract-
idea-based solution implemented with generic technical components in a
conventional way) to filter content on the Internet that overcomes existing
problems with other Internet filtering systems.” Id. at 1351. The court
determined that “[b]y taking a prior art filter solution (one-size-fits-all filter
at the ISP server) and making it more dynamic and efficient (providing
individualized filtering at the ISP server), the claimed invention represents a
‘software-based invention[ ] that improve[s] the performance of the
computer system itself.’” Id. Here, there is no such improvement.
Although the claim recites structural elements of a sensor, battery, and
vehicle, as discussed above, there is no claimed technological improvement
to these structures. Any improvement in the lies in the abstract idea itself,
i.e., creating a usage history and correlating data to result in a measure of
work based on accumulated and collected data. See Appeal Br. 18–19.
The Appellant also argues that “the claim[] expressly recite[s] claim
elements that are not known in the art.” Id. at 18; see also Reply Br. 4. To
the extent the Appellant argues that the claim is significantly more than the
abstract idea because there are not prior art rejections, an abstract idea does
not transform into an inventive concept just because the prior art does not
disclose or suggest it. See Mayo, 566 U.S. at 78. “Ground-breaking,
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innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). Indeed, “[t]he ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.” Diehr, 450 U.S. at 188–89; see also
Mayo, 566 U.S. at 91 (rejecting “the Government’s invitation to substitute
§§ 102, 103, and 112 inquiries for the better established inquiry under
§ 101”).
The Appellant further contends “[u]nder Berkheimer, the Appellant’s
claims are clearly subject-matter eligible.” Reply Br. 3. Specifically, the
Appellant argues that “the Examiner has been wholly unable to find any
reference or combination of references showing that battery sensors, which
measure physical properties, are well-understood, routine, or conventional in
the relevant industry.” Id.
The court in Berkheimer held that “[t]he patent eligibility inquiry may
contain underlying issues of fact.” Berkheimer v. HP Inc., 881 F.3d 1360,
1365 (Fed. Cir. 2018) (quoting Mortg. Grader, Inc. v. First Choice Loan
Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016) (“The § 101 inquiry ‘may
contain underlying factual issues.”’)). But, the court also held that “[w]hen
there is no genuine issue of material fact regarding whether the claim
element or claimed combination is well-understood, routine, [and]
conventional to a skilled artisan in the relevant field, this issue can be
decided on summary judgment as a matter of law.” Berkheimer, 881 F.3d at
1368 (emphasis added). This qualification has been subsequently reiterated.
Appeal 2018-007167
Application 14/212,719

19
If there is a genuine dispute of material fact, Rule 56 requires that
summary judgment be denied. In Berkheimer, there was such a
genuine dispute for claims 4–7, but not for claims 1–3 and 9. . . .
[I]n accordance with Alice, we have repeatedly recognized the
absence of a genuine dispute as to eligibility for the many claims
that have been defended as involving an inventive concept based
merely on the idea of using existing computers or the Internet to
carry out conventional processes, with no alteration of computer
functionality.
Berkheimer v. HP Inc., 890 F.3d 1369, 1371–73 (Fed. Cir. 2018) (Order, On
Petition for rehearing en banc, May 31, 2018) (Moore, J., concurring); see
also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354,
1368 (Fed. Cir. 2018) (“A factual allegation or dispute should not
automatically take the determination out of the court’s hands; rather, there
needs to be justification for why additional evidence must be considered—
the default being a legal determination.”). Here, the Specification
indisputably shows the sensor was conventional at the time of filing. See
supra, Spec. ¶¶ 31, 52. Further, the claim does not recite, and the Appellant
does not argue, how the sensor extracts data such that it would be new or
specific, or comprise an unconventional arrangement. See Automated
Tracking Sols., LLC v. Coca-Cola Co., 723 F. App’x 989, 993–95 (Fed. Cir.
2018) (claims tracking objects by collecting data from sensors did not use
“conventional RFID components in a non-conventional combination or
arrangement”); cf. Thales Visionix Inc. v. United States, 850 F.3d 1343,
1348–49 (Fed. Cir. 2017) (claim with “unconventional utilization of inertial
sensors” were not directed to an abstract idea because they sought “to
protect only the application of physics to the unconventional configuration
of sensors as disclosed”).
Appeal 2018-007167
Application 14/212,719

20
Thus, we are not persuaded of error in the Examiner’s determination
that the limitations of claim 1 do not transform the claim into significantly
more than the abstract idea. We therefore sustain the Examiner’s rejection
under 35 U.S.C. § 101 of claim 1.
The Appellant includes a separate heading for dependent claims 2–16,
but does not provide a separate argument for the rejection of these claims.
See Appeal Br. 20. Therefore, for the reasons given above, the rejection of
claims 2–16 is also sustained.

CONCLUSION
The Examiner’s decision to reject claims 1–16 is sustained.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–16 101 Eligibility 1–16
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. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).

AFFIRMED

Notice of References Cited
Application/Control No.

14/212,719
Applicant(s)/Patent Under Patent
Appeal No.
2018-007167
Examiner

Art Unit

3624

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Merriam-Webster Online Dictionary, https://www.merriam-webster.com/dictionary/normalize, retrieved
Jan. 3, 2020.

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normalize \'erb
4' Save Word
nor·mal·ize I \ ·nor-ma-.lTz O \
normalized; normalizing
Definition of normalize
transitive verb
1 : to make conform to or reduce to a norm or standard
2 : to make normal (as by a transformation of variables)
3 : to bring or restore to a normal condition
II normalize relations between two countries
Other Words from normalize
Synonyms
More Example Sentences
"- Learn More about normalize
Other Words from normalize
normalizable \ ·nor-ma-,IT-za-bal O \ adjective
normalization \ .n6r-ma-la-'za-shan O \ noun
Synonyms for normalize
Synonyms
formalize, homogenize, regularize, standardize
Visit the Thesaurus for More 0
Examples of normalize in a Sentence
// The drug normalizes heart funct ion.
// The talks are aimed at normalizing relations between the countries.
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Recent Examples on the Web
// Hanging out with high-school kids seems to work as a contact high for her.
normalizing her hidden recklessness.
- Emily Nussbaum. The New Yorker. "Uncertain Attraction in "Work in Progress" and "Dare Me","
16 Dec. 2019
II To do nothing and normalize this behavior would be a dereliction of my oath of
office.
- Rick Green. courant.com. "Rep. Hayes says she will vote for impeachment," 12 Dec. 2019
These example sentences are selea ed automatically from various onl ine news sources to reflect current usage of
the word 'norm alize.' Views expressed in the examples do not represent the opinion of Merriam·Webster or its
editors. Send us feedback.
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First Known Use of normalize
1847, in the meaning defined at sense 1
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Time Traveler for normalize
~ The first known use of normalize
~ was in 1847
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From the Editors at Merriam-Webster
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Dictionary Entries near
normalize
normal honey
normal horizontal separation
normalise
normalize
normalizer
normal minor scale
normal moisture capacity
Cite tn1s Entry
"Norma lize." The Merriam-Webster.com
Dictionary, Merriam-Webster Inc.,
https://www.merriam-
webster.com/dictionary/normalize.
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More Definitions for normalize
normalize \'erh
0
English Language Learners Definition of normalize
formal : to bring (someone or something) back to a usual or expected state or
condition
See the full definition for normalize in the English Language Learners Dictionary
normalize transiLi\'e \'erh
nor·mal·ize
variants: or British normalise \ ' n6r-ma-.1Tz O \
normalized or British normalised; normalizing or British normalising
Medical Definition of normalize
: to make conform to or reduce to a norm or standard
II normalize blood pressure
Other Words from normalize
normalization or British normalisation \ ,nor-ma-la-'za-shan O \ noun
More from Merriam-Webster on normalize
Thesaurus: Al l synonyms and antonyms for normalize
Spanish Central: Translation of normalize
Nglish: Translation of normalize for Spanish Speakers
Britannica English: Translation of normalize for Arabic Speakers
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