Dillon, Steven R.

Patent Trials and Appeals Board

Oct 29, 2020

13362476 - (D) (P.T.A.B. Oct. 29, 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.
13/362,476 01/31/2012 Steven R. Dillon 30203/45564 3669
45372 7590 10/29/2020
Marshall, Gerstein & Borun LLP (Emerson)
233 South Wacker Drive
6300 Willis Tower
Chicago, IL 60606
EXAMINER
SWARTZ, STEPHEN S
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
10/29/2020 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN R. DILLON
________________

Appeal 2019-002349
Application 13/362,476
Technology Center 3600
____________

Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
MATTHEW J. McNEILL, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1‒5, 7‒10, 12‒17, 19‒27, and 29‒31, which are all the
claims pending in this application. Claims 6, 11, 18, and 28 have been
cancelled. An oral hearing was held on October 6, 2020. 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. Appellant identifies the real party in interest as Fisher-
Rosemount Systems, Inc. Appeal Br. 2.
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STATEMENT OF THE CASE
Introduction
Appellant’s application relates to dynamically generating and
updating maintenance routes in a process control system having a wireless
network. Spec. ¶ 1. Claim 1 is illustrative of the appealed subject matter and
reads as follows with bracketed numbering added:
1. A method of automatically generating an ordered
physical route in a process control system, wherein the process
control system includes a wireless gateway network device and
a plurality of process devices in wireless communication with
the wireless gateway network device, the method implemented
via one or more processors, the method comprising:
[1] receiving signal strength data from each of the
plurality of process devices, the signal strength data indicative
of a signal strength of a wireless connection between each
process device and the wireless gateway network device and/or
between each process device and another process device;
[2] for each process device, beginning with the first
process device, in an initial list of process devices in direct
wireless communication with the wireless gateway network
device, where the process devices of the initial list are ranked
therein according to a signal strength of a wireless connection
with the wireless gateway network device, iteratively selecting
the process devices from the initial list;
[3] with each iteration, appending the initial list with the
remaining process devices from the plurality of process devices
until the plurality of process devices are included in the
appended initial list by:
[3a] creating a subsequent list of process devices in
direct wireless communication with the process device
selected from the initial list, wherein the process devices
of the subsequent list are ranked therein according to a
signal strength of a wireless connection with the process
device selected from the initial list; and
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[3b] appending the initial list with the process
devices in the subsequent list, wherein each process
device appended to the initial list is ranked therein after
the process device selected from the initial list according
to the signal strength of its wireless connection with the
process device selected from the initial list, unless the
process device from the subsequent list is already ranked
in the initial list ahead of the selected process device
from the initial list,
[4] generating an ordered physical route of traversal
through the plurality of process devices according to the order
of the plurality of process devices in the appended list; and
[5] providing the ordered physical route of traversal to a
client computing device, wherein the client computing device is
programmed to provide at least some of a plurality of
navigation instructions according to the ordered physical route
of traversal audibly or visually.
The Examiner’s Rejection
Claims 1‒5, 7‒10, 12‒17, 19‒27, and 29‒31 stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
See Final Act. 7‒18.
ANALYSIS
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. Alice, 573 U. S. at 217–18 (citing Mayo Collaborative Servs. v.
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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)
(“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, 69 (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 (1854))); 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
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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. (citation omitted) (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 (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.
In January 2019, the PTO published revised guidance on the
application of § 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (“Revised
Guidance”). Under that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes); and
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(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)).
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 Revised Guidance.
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. See Revised Guidance. Independent claims 1 and 14
recite a “method.” Independent claim 23 recites a “system.” Appellant does
not argue the Examiner erred in concluding claims 1, 14, and 23 fall within
the four statutory categories of patentable subject matter. We agree with the
Examiner’s conclusion because claims 1 and 14 fall within the process
category and claim 23 falls within the machine or manufacture categories.
Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite any judicial exceptions, including certain
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groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice, or
mental processes). See Revised Guidance.
The Examiner determines claim 1 is directed to the “abstract idea of
generating automatically a maintenance route by process control for a
maintenance at a plant.” Final Act. 8. The Examiner determines steps 4 and
5 recite certain methods of organizing human activity. Id. The Examiner
determines the remaining steps—1, 2, 3, 3a, and 3b—recite an idea of itself
or mental process. Id.
Claim 1 recites a method of generating an ordered physical route in a
process control system that includes five steps. In particular, step 1 recites
receiving data for each of a plurality of process devices. Step 2 recites
creating a first list of process devices that are in direct wireless
communication with a wireless gateway network device. Step 3 recites
supplementing the first list using a second list. Steps 3a and 3b recite how
devices are added to the second list, specifying that devices are identified in
order of their relative signal strength and added according to their signal
strength. Step 4 recites generating an ordered physical route of traversal
according to the first list. Step 5 recites providing the ordered physical route
to a client computing device.
The steps of the claimed method, under their broadest reasonable
interpretation, recite steps that may be performed in the human mind,
including observations, evaluations, and judgments. In particular, step 1
recites receiving data, which is an observation that may be performed in the
human mind or with pen and paper. Steps 2, 3, 3a, and 3b recite creating an
ordered list according to the specified method, which involves a series of
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evaluations or judgments using the observed data. These steps may also be
performed in the human mind or with pen and paper. Step 4 recites
generating an ordered physical route of traversal, which is an evaluation or
judgment that may be performed with pen and paper. Each of these steps,
therefore, falls within the mental process category of abstract ideas. See
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (“[W]ith the exception of generic computer-implemented steps,
there is nothing in the claims themselves that foreclose them from being
performed by a human, mentally or with pen and paper.”); Versata Dev.
Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have
examined claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.”).
Accordingly, we conclude claim 1 recites concepts performed in the
human mind, which fall within the mental processes and certain method of
organizing human activities categories of abstract ideas identified in the
Revised Guidance.
Revised Guidance Step 2A, Prong 2
Under Step 2A, Prong 2 of the Revised Guidance, we next determine
whether the claims recite additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
To integrate the exception into a practical application, the additional claim
elements must, for example, improve the functioning of a computer or any
other technology or technical field (see MPEP § 2106.05(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b)), effect
a transformation or reduction of a particular article to a different state or
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thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment (see MPEP
§ 2106.05(e)). See Revised Guidance.
The “additional elements” recited in claim 1 include “a process
control system,” “a wireless gateway network,” “a plurality of process
devices,” “one or more processors,” and “a client computing device.” None
of these additional elements constitutes “additional elements that integrate
the exception into a practical application.”
Appellant argues claim 1 integrates the recited abstract idea into a
practical application. See Appeal Br. 6‒12; Reply Br. 1‒11. In particular,
Appellant argues conventional solutions for generating physical routes used
by maintenance personnel were based on a person’s knowledge of the
physical location of the devices. Appeal Br. 7. Appellant argues existing
computer-related solutions did not generate a physical route of traversal. Id.
Appellant argues signal strength and hop counts were conventionally used
only to create communication paths, not physical paths, through mesh
networks. Id. Appellant argues the use of signal strength and hop count to
generate a physical route for maintenance workers is a non-abstract
improvement to computer functionality. Id.
Appellant analogizes the claims to those at issue in McRO. See Appeal
Br. 8‒9 (citing McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d
1299, 1315 (Fed. Cir. 2016)). Appellant argues that claim 1, like the claims
in McRO, enables computers to perform a task that previously was only
performed subjectively by humans. Id. Appellant argues this improvement to
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computer functionality works differently than the conventional method that
relied on knowledge of the physical location of devices. Id. at 9.
Appellant has not persuaded us of Examiner error. The focus of
claim 1 is not on an improvement to computers or another technology, but
rather on using generic computer components to receive signal strength data,
analyze the data, and generate an ordered physical route using the data.
Thus, claim 1 focuses on the mental process of generating an ordered
physical route, not on any particular improvement to technology. The two
disadvantages Appellant has identified in conventional systems—inefficient
use of maintenance workers’ time in generating a physical route and sub-
optimal physical routes (see Spec. ¶ 26)—are not problems in computers or
any particular technology, but rather are problems that are solved by using
generic computers to perform an otherwise manual task. The alleged
improvements identified by Appellant do not “enable[] a computer . . . to do
things it could not do before.” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d
1299, 1305 (Fed. Cir. 2018). Indeed, “the [S]pecification is silent as to any
specific structural or inventive improvements in computer functionality
related to this claimed system.” See Customedia Techs., LLC v. Dish
Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020).
Moreover, our reviewing court has “made clear that mere automation
of manual processes using generic computers does not constitute a
patentable improvement in computer technology.” Credit Acceptance Corp.
v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). Like the claims in
Credit Acceptance, the focus of claim 1 is on the business practice, “and the
recited generic computer elements ‘are invoked merely as a tool.’” Id. (citing
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Enfish, 822 F.3d 1327); see also Versata Dev. Grp., Inc. v. SAP Am., Inc.,
793 F.3d 1306, 1334 (Fed. Cir. 2015) (collecting cases).
The claimed additional elements are used to achieve the claimed
results and are not focused on “a specific means or method that improves the
relevant technology.” McRO, 837 F.3d at 1314. The additional elements of
claim 1, including those identified above, comprise generic computer
elements that are invoked as a tool to implement this improved business
practice, as confirmed by the Specification. See, e.g., Spec. ¶¶ 40, 41, 45, 47,
50, 52, and 55‒57. Also, the Specification notes that traditionally, route-
based maintenance software applications established maintenance routes
using knowledge of the physical location of devices. Spec. ¶ 26. Appellant
claims to improve this business practice by incorporating additional data into
the process of generating a route; however, this improvement focuses on this
business practice of generating a route, not any particular technology.
We also note that step 5, under its broadest reasonable interpretation,
recites providing data to a computing device such that the data may be
presented to a user audibly or visually. This presentation of data is extra-
solution activity that does not integrate an abstract idea into a practical
application. See MPEP § 2106.05(g).
For these reasons, Appellant has not persuaded us of Examiner error
with respect to Step 2A, Prong 2 of the Revised Guidance. We, therefore,
conclude the judicial exception is not integrated into a practical application
under the Revised Guidance.
Revised Guidance Step 2B
Under Step 2B of the Revised Guidance, we next determine whether
the claims recite an “inventive concept” that “must be significantly more
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than the abstract idea itself, and cannot simply be an instruction to
implement or apply the abstract idea on a computer.” BASCOM Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir.
2016). There must be more than “computer functions [that] are ‘well-
understood, routine, conventional activit[ies]’ previously known to the
industry.” Alice, 573 U.S. at 225 (second alteration in original) (quoting
Mayo, 566 U.S. at 73).
Appellant argues claim 1 recites an “inventive concept” because it
improves computer functionality by allowing computers to generate an
ordered physical route when such generation was previously only performed
subjectively by humans. See Appeal Br. 10‒12. We disagree for the reasons
discussed above with respect to Revised Guidance Step 2A, Prong 2.
Appellant also argues claim 1 recites an inventive concept because it
uses specific information in a particular manner that generates a list of
process devices that is otherwise useless to the wireless environment. Appeal
Br. 12. Appellant has not persuaded us of Examiner error. Appellant focuses
on the narrow breadth of the claims, but narrow claims do not ensure patent
eligibility. “As a matter of law, narrowing or reformulating an abstract idea
does not add ‘significantly more’ to it.” BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1291 (citing SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1168 (Fed. Cir. 2018).
Appellant has not persuasively identified, nor have we found, any
“additional elements” that amount to “significantly more” than the abstract
idea recited by claim 1. As noted above, the Specification confirms the
generic nature of the claimed additional elements. See, e.g., Spec. ¶¶ 40, 41,
45, 47, 50, 52, and 55‒57. We, therefore, sustain the patent-ineligible subject
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matter rejection of claim 1. We also sustain the rejection of independent
claims 14 and 23, which Appellant argues are patent eligible for the same
reasons. See Appeal Br. 6‒12; Reply Br. 1‒11.
Dependent Claims
Appellant argues the Examiner errs by failing to explain why the
dependent claims are patent ineligible. See Appeal Br. 12‒14; Reply Br. 11‒
13. Appellant argues the Examiner’s rejection of the dependent claims is
conclusory and fails to consider the individual limitations of each claim. See
Reply Br. 12.
Appellant has not persuaded us of Examiner error. The Examiner
finds nothing in the dependent claims amounts to more than collecting data,
analyzing data, and displaying data that provides a route of traversal. See
Ans. 15. The Examiner identifies the additional elements recited in the
dependent claims as a network, processor, memory, and display, and notes
that the Specification identifies further devices that may be involved. See
Final Act. 11. The Examiner finds the claims recite generic computer
components and none of the claimed or disclosed elements improves the
functioning of the computer itself. See id. at 12 (citing Spec. ¶¶ 8, 40, and
56).
We agree with the Examiner that the dependent claims do not recite
limitations that integrate the claimed abstract idea into a practical application
or amount to significantly more than the abstract idea. For example,
claims 2‒5 and 7 each recites additional detail regarding the creation of the
claimed lists, including the order of devices in the initial list. This further
narrowing of the abstract idea does not impart patent eligibility, as noted
above. Claims 8 and 10 specify the manner in which the ordered physical
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route is displayed, which is extra-solution activity that does not impart
patent eligibility. Claim 9 specifies that the client computing device is a
handheld device, which is a generic computing device that does not change
the analysis from the independent claims. Claims 15, 16, and 17 each recites
additional limitations relating to the data that are used to add network nodes
to the list, including explicit references to hop count. These claims further
narrow the abstract idea recited in the independent claims. The remaining
dependent claims fail to integrate the abstract idea into a practical
application or amount to significantly more for the same reasons.
Accordingly, Appellant has not persuaded us of Examiner error with respect
to the dependent claims. We, therefore, sustain the rejection of claims 2‒5,
7‒10, 12, 13, 15‒17, 19‒22, 24‒27, and 29‒31.

DECISION SUMMARY
In summary:
Claims Rejected 35 U.S.C. § Basis Affirmed Reversed
1‒5, 7‒10, 12‒
17, 19‒27, 29‒31
101 Eligibility 1‒5, 7‒10, 12‒17,
19‒27, 29‒31

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)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED