Toyota Motor Engineering & Manufacturing North America, Inc.

Patent Trials and Appeals Board

Sep 3, 2021

2021001508 (P.T.A.B. Sep. 3, 2021)

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.
15/879,011 01/24/2018 Douglas A. Moore 22562-2498/
TOY2017-540 PA
5088
96411 7590 09/03/2021
Dinsmore & Shohl LLP
255 East Fifth Street, Suite 1900
Cincinnati, OH 45202
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
09/03/2021 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):
CincyPAIR@dinsmore.com
elise.merkel@dinsmore.com
jennifer.baker@dinsmore.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOUGLAS A. MOORE
____________

Appeal 2021-001508
Application 15/879,011
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Douglas A. Moore (Appellant2) seeks review under 35 U.S.C. § 134
of a final rejection of claims 1–20, the only claims pending in the application
on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
The Appellant invented a way of electrically scheduling wheelchair
components and, more specifically, facilitating the renting and scheduling of
a powered base component for a traveling wheelchair passenger.
Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method for electronically scheduling wheelchair
components comprising:
[1] identifying,
by a computing device,
a personal wheelchair component;

1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal
Br.,” filed September 8, 2020) and Reply Brief (“Reply Br.,” filed December
29, 2020), and the Examiner’s Answer (“Ans.,” mailed October 29, 2020),
and Final Action (“Final Act.,” mailed April 7, 2020).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Toyota
Motor Engineering & Manufacturing North America, Inc. (Appeal Br. 1).

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[2] determining,
by the computing device,
a location
for an event of a passenger of the personal
wheelchair component;
[3] determining,
by the computing device,
a rental wheelchair component
that will compatibly pair with the personal
wheelchair component;
[4] scheduling,
by the computing device,
the rental wheelchair component
for compatibly pairing with the personal wheelchair
component
for at least one section of the event,
wherein,
when the rental wheelchair component paired
with the personal wheelchair component,
a wheelchair setting is communicated
for implementation.
The Examiner relies upon the following prior art:
Name Reference Date
Ben-Yehuda US 2008/0046298 A1 Feb. 21, 2008
Childs US 2017/0215979 Al

Aug. 3, 2017

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Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1–20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Ben–Yehuda and Childs.

ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of obviousness turn primarily on whether the art describes
the compatibility pairing in limitations 3 and 4.

FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Ben-Yehuda
01. Ben-Yehuda is directed to planning of travel, recreational
activities and/or tourism activities. Ben-Yehuda para. 1.
02. Ben-Yehuda describes a system for generating a travel plan.
Ben-Yehuda para. 22.
03. Ben-Yehuda describes making a reservation for a supporting
resource for a scheduled activity. Ben-Yehuda para. 62.
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Childs
04. Childs is directed to an accessory support and devices for an
accessory support. Childs para. 2.
05. Childs describes a coupling system for coupling a medical
accessory to an accessory support. Childs para. 6.

ANALYSIS
Claims 1–20 rejected under 35 U.S.C. § 101 as directed to a judicial
exception without significantly more
STEP 13
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of those
patent-ineligible concepts. If so, we then ask, “[w]hat else is
there in the claims before us? To answer that question, . . .
consider the elements of each claim both individually and “as an
ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an “‘inventive concept’”—i.e., an

3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
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element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions (a law of nature, a natural phenomenon, or an
abstract idea). Then, if the claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims “apply, rely on, or use the
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.” Revised Guidance, 84 Fed. Reg. at
54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites identifying component data, determining location and
component data, and scheduling component to event data. Identifying,
determining, and scheduling are rudimentary forms of analysis. Scheduling
is also data storage. Thus, claim 1 recites analyzing and storing data. None
of the limitations recites technological implementation details for any of
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these steps, but instead recite only results desired by any and all possible
means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts4, (2) certain methods of organizing
human activity5, and (3) mental processes6. Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 1 recites the concept of
managing commercial rentals. Specifically, claim 1 recites operations that
would ordinarily take place in advising one to schedule compatible
wheelchair components. The advice to schedule compatible wheelchair
components involves scheduling the rental wheelchair component, which is
an economic act, and identifying a personal wheelchair component, which is
an act ordinarily performed in the stream of wheelchair rental commerce.

4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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For example, claim 1 recites “scheduling . . . the rental wheelchair
component,” which is an activity that would take place whenever one is
managing commercial wheelchair rentals. Similarly, claim 1 recites
“identifying . . . a personal wheelchair component,” which is also
characteristic of wheelchair rental commerce.
The Examiner determines the claims to be directed to scheduling
rental wheelchair components. Final Act. 3. The preamble to claim 1
recites that it is a method for electronically scheduling wheelchair
components. The steps in claim 1 result in managing commercial rentals by
scheduling compatible wheelchair components absent any technological
mechanism other than a conventional computer for doing so.
As to the specific limitations, limitations 1–4 recite generic and
conventional analyzing and storing of wheelchair component data, which
advise one to apply generic functions to get to these results. The limitations
thus recite advice for scheduling compatible wheelchair components. To
advocate scheduling compatible wheelchair components is conceptual
advice for results desired and not technological operations.
The Specification at paragraph 1 describes the invention as relating to
electrically scheduling wheelchair components and, more
specifically, to facilitating the renting and scheduling of a powered
base component for a traveling wheelchair passenger. Thus, all this
intrinsic evidence shows that claim 1 recites managing commercial rentals.
This is consistent with the Examiner’s determination.
This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity because managing commercial
rentals coordinates commercial activity. The concept of managing
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commercial rentals by scheduling compatible wheelchair components is one
idea for such coordination. The steps recited in claim 1 are part of how this
might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Interval Licensing LLC v. AOL,
Inc., 896 F.3d 1335, 1346 (Fed. Cir. 2018)(generic and conventional
information acquisition and organization steps that are connected to, but do
not convert, the abstract idea).
This in turn is an example of concepts performed in the human mind
as mental processes because the steps of analyzing and storing data mimic
human thought processes of observation, evaluation, judgment, and opinion,
perhaps with paper and pencil, where the data interpretation is perceptible
only in the human mind. See In re TLI Commc’ns LLC Patent Litig., 823
F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1093–94 (Fed. Cir. 2016). Claim 1, unlike the claims found
non-abstract in prior cases, uses generic computer technology to perform
data analysis and storage and does not recite an improvement to a particular
computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016) (finding claims not abstract
because they “focused on a specific asserted improvement in computer
animation”). As such, claim 1 recites analyzing and storing data, and not a
technological implementation or application of that idea.
From this we conclude that at least to this degree, claim 1 recites
managing commercial rentals by scheduling compatible wheelchair
components, which is a commercial and legal interaction, one of certain
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methods of organizing human activity identified in the Revised Guidance,
and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application.7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, “all inventions ... embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas.” Thus, an
invention is not rendered ineligible for patent simply because it
involves an abstract concept. “[A]pplication[s]” of such
concepts “ ‘to a new and useful end,’ ” we have said, remain
eligible for patent protection. Accordingly, in applying the § 101
exception, we must distinguish between patents that claim the “
‘buildin[g] block[s]’ ” of human ingenuity and those that
integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 1–4 recite generic computer
processing expressed in terms of results desired by any and all possible
means and so present no more than conceptual advice. All purported
inventive aspects reside in how the data is interpreted and the results desired,
and not in how the process physically enforces such a data interpretation or
in how the processing technologically achieves those results.

7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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Viewed as a whole, Appellant’s claim 1 simply recites the concept of
managing commercial rentals by scheduling compatible wheelchair
components as performed by a generic computer. This is no more than
conceptual advice on the parameters for this concept and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The 11+ pages of specification do not bulge
with disclosure, but only spell out different generic equipment8 and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of
managing commercial rentals by scheduling compatible wheelchair
components under different scenarios. They do not describe any particular
improvement in the manner a computer functions. Instead, claim 1 at issue
amounts to nothing significantly more than an instruction to apply managing
commercial rentals by scheduling compatible wheelchair components using
some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 225–26.
None of the limitations reflects an improvement in the functioning of
a computer, or an improvement to other technology or technical field,
applies or uses a judicial exception to effect a particular treatment or
prophylaxis for a disease or medical condition, implements a judicial

8 The Specification describes any processing component operable to
receive and execute instructions. Spec. para. 50.
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exception with, or uses a judicial exception in conjunction with, a particular
machine or manufacture that is integral to the claim, effects a transformation
or reduction of a particular article to a different state or thing, or applies or
uses the judicial exception in some other 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.
We conclude that claim 1 is directed to achieving the result of
managing commercial rentals by advising one to schedule compatible
wheelchair components, as distinguished from a technological improvement
for achieving or applying that result. This amounts to commercial or legal
interactions, which fall within certain methods of organizing human activity
that constitute abstract ideas. The claim does not integrate the judicial
exception into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract idea
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“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of “additional feature[e]” that provides any
“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for analyzing and storing data amounts to electronic data query
and retrieval—one of the most basic functions of a computer. All of these
computer functions are generic, routine, conventional computer activities
that are performed only for their conventional uses. See Elec. Power Grp.
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be
achieved by any general purpose computer without special programming”).
None of these activities is used in some unconventional manner nor does any
produce some unexpected result. Appellant does not contend it invented any
of these activities. In short, each step does no more than require a generic
computer to perform generic computer functions. As to the data operated
upon, “even if a process of collecting and analyzing information is ‘limited
to particular content’ or a particular ‘source,’ that limitation does not make
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the collection and analysis other than abstract.” SAP America, Inc. v.
InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data analysis-storage is equally
generic and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis,
modification, generation, display, and transmission), Two-Way Media Ltd. v.
Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir.
2017) (sequence of processing, routing, controlling, and monitoring). The
ordering of the steps is therefore ordinary and conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic computer
components configured to implement the same idea. This Court
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has long “warn[ed] ... against” interpreting § 101“in ways that
make patent eligibility ‘depend simply on the draftsman’s art.’
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
legal interaction of managing commercial rentals by advising one to
schedule compatible wheelchair components, without significantly more.
APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action 3–4 and Answer 3–5 and
reach similar legal conclusions. We now turn to the Reply Brief.
We are not persuaded by Appellant's argument that lack of preemption
should be considered. Reply Br. 3–4. It has been considered, but the
remaining factors outweigh any such consideration. “Where a patent’s
claims are deemed only to disclose patent ineligible subject matter under the
Mayo [/Alice] framework, as they are in this case, preemption concerns are
fully addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015).
We are not persuaded by Appellant's argument that
Appellant established that the method of claim 1 determines a
component that will compatibly pair with a personal wheelchair
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component. This can be an extremely difficult and time-
consuming process, one that could not be performed under
previous solutions or manually without the technological
innovations of claim 1. Many powered wheelchairs have
different physical interfaces, power needs, and/or functionality.
Thus, identifying the personal wheelchair is a complicated and
difficult process that is unique to wheelchairs and a problem not
previously faced.
Reply Br. 4. Unfortunately, claim 1 recites no more than doing such
determination, absent any technological implementation details. Appellant’s
argument regarding complexity and time consumption only underscores the
necessity for reciting the technological mechanisms for overcoming these
hurdles.
At that level of generality, the claims do no more than describe
a desired function or outcome, without providing any limiting
detail that confines the claim to a particular solution to an
identified problem. The purely functional nature of the claim
confirms that it is directed to an abstract idea, not to a concrete
embodiment of that idea.
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed.
Cir. 2016).
We are not persuaded by Appellant's argument that claim 1 “does not
merely recite an idea of a solution, but instead a step-by-step recitation of
the process of identifying, pairing, and scheduling wheelchair components in
a manner that involves computing that has not been performed prior to the
filing date of this application.” Reply Br. 5. The “step-by-step recitation of
the process of identifying, pairing, and scheduling wheelchair components”
is one of conventional computer operations in conventional sequence, as
determined above. Whether the process is novel is not at issue. “A claim
for a new abstract idea is still an abstract idea. The search for a § 101
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inventive concept is thus distinct from demonstrating § 102 novelty.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016).
We are not persuaded by Appellant's argument that “the Examiner
presupposes that the claims are directed to an abstract idea.” Reply Br. 5.
The Examiner and the analysis above both lay out reasoning for such
determination.

Claims 1–20 rejected under 35 U.S.C. § 103(a) as unpatentable over Ben–
Yehuda and Childs
We are persuaded by Appellant's argument that the art does not
describe the compatibility pairing in limitations 3 and 4. Appeal Br. 6–7;
Reply Br. 8. The Examiner only shows that the art describes components
that may be compatible, not actually making a compatibility pairing. Ans. 5.

CONCLUSIONS OF LAW
The rejection of claims 1–20 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
The rejection of claims 1–20 under 35 U.S.C. § 103(a) as unpatentable
over Ben-Yehuda and Childs is improper.

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CONCLUSION
The rejection of claims 1–20 is affirmed.
In summary:
Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–20 103 Ben-Yehuda,
Childs
1–20
Overall Outcome 1–20

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)(1)(iv) (2011).

AFFIRMED