John Mckethan

Patent Trials and Appeals Board

Sep 25, 2019

13960041 - (D) (P.T.A.B. Sep. 25, 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.
13/960,041 08/06/2013 John McKethan S101 0320.2 1050
118311 7590 09/25/2019
Toering Patents PLLC
P.O. Box 1419
Leesburg, VA 20177
EXAMINER
GOYEA, OLUSEGUN
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
09/25/2019 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):
admin@toeringpatents.com
rick@toeringpatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN McKETHAN
____________________

Appeal 2018-008600
Application 13/960,041
Technology Center 3600
____________________

Before JAMES R. HUGHES, JAMES W. DEJMEK, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 35–54. Appellant has canceled claims 1–34. See App. Br. 3. We
have jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies
SkyBitz, Inc. as the real party in interest. App. Br. 3.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to using
location tracking of movable assets (“e.g., dry van trailers, refrigerated
trailers, flatbed trailers, cargo containers, intermodal rail containers, frac
tanks, ISO containers, chassis, roll off bends, tank trailers, rail cars, etc.”)
“to monitor, track, and optimize asset utilization.” Spec. ¶¶ 2, 3, 5. A
geographic area (e.g., a trailer yard) may be defined by a customer. Spec.
¶ 28. Within the Specification and claims, the customer-defined geographic
area may be referred to as a “landmark area.” Spec. ¶ 28. In a disclosed
embodiment, as assets enter or exit a landmark area, data (e.g., arrival and
departure times from a landmark area) may be generated and analyzed.
Spec. ¶¶ 31–34. According to the Specification, “any set of one or more
statistics that provide an indication of asset utilization and non-utilization
can be used to drive an asset pool management and geographical balancing
application.” Spec. ¶ 46.
Claim 35 is representative of the subject matter on appeal and is
reproduced below:
35. A method, comprising:
receiving, by an operations center from a user computing
device, an identification of a plurality of customer defined
landmark areas, wherein each of the plurality of customer
defined landmark areas is associated with a separate geographic
area;
receiving, by the operations center, position reports from
each of a plurality of assets;
tracking, by the operation center based on the received
position reports, an entry by some of the plurality of assets into
a first of the plurality of customer defined landmark areas and an
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exit by some of the plurality of assets out of the first of the
plurality of customer defined landmark areas, the tracking of the
entry and the exit producing a current pool of assets at the first
of the plurality of customer defined landmark areas, the current
pool of assets comprising those of the plurality of assets that have
entered, but not yet exited, the first of the plurality of customer
defined landmark areas;
determining, by the operations center based on the
received position reports, a ranked list of the plurality of assets
in the current pool of assets based on a turn time target that
identifies a target amount of time between an entry and an exit
of an asset from the first of the plurality of customer defined
landmark areas; and
transmitting, by the operations center, the ranked list to a
load planner system via a communication network, the ranked
list causing the load planner system to transmit an assignment
instruction to one or more assets selected from the ranked list,
the assignment instruction causing the one or more assets to
depart from the customer defined landmark area, thereby
adjusting the current pool of assets at the first of the plurality of
customer defined landmark areas.

The Examiner’s Rejection
Claims 35–54 stand rejected under 35 U.S.C. § 101 as being directed
to patent-ineligible subject matter. Final Act. 2–5.

ANALYSIS2
Appellant disputes the Examiner’s conclusion that the pending claims
are directed to patent-ineligible subject matter. App. Br. 7–28; Reply Br. 3–

2 Throughout this Decision, we have considered the Appeal Brief, filed
May 25, 2018 (“App. Br.”); the Reply Brief, filed September 2, 2018
(“Reply Br.”); the Examiner’s Answer, mailed July 3, 2018 (“Ans.”); and
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5. In particular, Appellant argues that, to the extent the Examiner finds
certain features are well-understood, routine, or conventional, the Examiner
has not supported properly those findings with evidence, in accordance with
the Berkheimer Memorandum.3 App. Br. 7–9; Reply Br. 3–4. Also,
Appellant argues the claims recite significantly more than the alleged
abstract idea. App. Br. 13–14. Specifically, Appellant asserts the use of
“turn time” for assets “is a[n] unconventional mechanism for measuring
efficiency and for allocating assets among different customer defined
landmark areas” and “improve[s] utilization of assets.” App. Br. 13–14.
Moreover, for independent claims 42 and 49, Appellant generally
relies on the same arguments advanced with respect to independent claim
35. App. Br. 19–20, 24. In addition, for dependent claims 36–41, 43–48,
and 50–54, Appellant asserts the claims are patent eligible for the same
reasons as those for the claim from which they depend. App. Br. 15–28.
Further, for each of these claims, Appellant asserts the Examiner failed to
provide proper support that the features of the claim are well-understood,
routine, or conventional and submits instead that the features are
unconventional and non-routine. App. Br. 15–28.

the Final Office Action, mailed August 25, 2017 (“Final Act.”), from which
this Appeal is taken.
3 On April 19, 2018, the Deputy Commissioner for Patent Examination
Policy issued a memorandum entitled: Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (i.e., “the Berkheimer Memorandum”)
(discussing Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir. 2018))
(available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF).

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The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the Office recently published revised
guidance for evaluating subject matter eligibility under 35 U.S.C. § 101,
specifically with respect to applying the Alice framework. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Office Guidance”). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253,
1257–58 (Fed. Cir. 2016). Per Office Guidance, this first inquiry has two
prongs of analysis (i) does the claim recite a judicial exception (e.g., an
abstract idea), and (ii) if so, is the judicial exception integrated into a
practical application. 84 Fed. Reg. at 54. Under the Office Guidance, if the
judicial exception is integrated into a practical application, see infra, the
claim passes muster under § 101. 84 Fed. Reg. at 54–55. If the claim is
directed to a judicial exception (i.e., recites a judicial exception and does not
integrate the exception into a practical application), the next step is to
determine whether any element, or combination of elements, amounts to
significantly more than the judicial exception. Alice, 573 U.S. at 217;
84 Fed. Reg. at 56.
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Here, we conclude Appellant’s claims recite an abstract idea because
they recite mental processes. 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. 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.”); see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011) (holding that the incidental use of a “computer” or “computer readable
medium” does not make a claim otherwise directed to a process that “can be
performed in the human mind, or by a human using a pen and paper” patent
eligible); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
71 (2012) (explaining mental processes are not patentable); 84 Fed. Reg. at
52–53 nn.14–15.
More specifically, Appellant’s claims are directed to scheduling of
available assets based on a desired metric. This is consistent with how
Appellant describes the claimed invention. See Spec. ¶ 2, Abstract
(describing use of location tracking of assets to support decision processes
related to the management of multiple assets). Determining which assets are
available based on their location, and scheduling certain assets for
assignment based on a desired metric can be performed by a human,
mentally or with pen and paper. Consistent with our Office Guidance and
case law, we conclude that scheduling of available assets based on a desired
metric is a mental process and, thus, an abstract idea. See 84 Fed. Reg. at
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52; see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016) (concluding that “analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category”);
CyberSource, 654 F.3d at 1371–72 (concluding claims directed to “detecting
credit card fraud based on information relating [to] past transactions” can be
performed in the human mind and were drawn to a patent-ineligible mental
process); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94
(Fed. Cir. 2016) (concluding claims directed to “collecting and analyzing
information to detect misuse and notifying a user when misuse is detected”
to be mental processes within the abstract-idea category); Voter Verified,
Inc. v. Election Sys. & Software LLC, 887 F.3d 1376, 1385–86 (explaining
the concepts of voting, verifying the vote, and submitting the vote for
tabulation to be abstract). Additionally, we note that using a computer to
perform tasks more quickly or efficiently does not confer patent eligibility
on an otherwise ineligible abstract idea. See, e.g., Bancorp Servs., LLC v.
Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)
(“[T]he fact that the required calculations could be performed more
efficiently via a computer does not materially alter the patent eligibility of
the claimed subject matter.”).
Claim 35 is reproduced below and includes the following claim
limitations that recite scheduling of available assets based on a desired
metric, emphasized in italics:
35. A method, comprising:
receiving, by an operations center from a user computing
device, an identification of a plurality of customer defined
landmark areas, wherein each of the plurality of customer
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defined landmark areas is associated with a separate geographic
area;
receiving, by the operations center, position reports from
each of a plurality of assets;
tracking, by the operation center based on the received
position reports, an entry by some of the plurality of assets into a
first of the plurality of customer defined landmark areas and an
exit by some of the plurality of assets out of the first of the
plurality of customer defined landmark areas, the tracking of the
entry and the exit producing a current pool of assets at the first
of the plurality of customer defined landmark areas, the current
pool of assets comprising those of the plurality of assets that have
entered, but not yet exited, the first of the plurality of customer
defined landmark areas;
determining, by the operations center based on the
received position reports, a ranked list of the plurality of assets
in the current pool of assets based on a turn time target that
identifies a target amount of time between an entry and an exit
of an asset from the first of the plurality of customer defined
landmark areas; and
transmitting, by the operations center, the ranked list to a
load planner system via a communication network, the ranked
list causing the load planner system to transmit an assignment
instruction to one or more assets selected from the ranked list,
the assignment instruction causing the one or more assets to
depart from the customer defined landmark area, thereby
adjusting the current pool of assets at the first of the plurality of
customer defined landmark areas.
More particularly, the concept of scheduling of available assets based
on a desired metric comprises (i) determining which assets are available
(i.e., the claimed steps of receiving position information from the assets and
tracking their position to determine if the assets are within a certain
geographic area (i.e., the customer defined landmark)); (ii) ranking the
available assets according to a desired metric, such as a turn time target (i.e.,
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the claimed step of determining a ranked list of available assets based on a
turn time target); and (iii) sending the ranked list of assets to a scheduler so
that the assets may be scheduled for assignment (i.e., the claimed step of
transmitting the list of available assets ranked by the turn time target to a
load planner system for assignment).
Because the claim recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
application. 84 Fed. Reg. at 54. To determine whether the judicial
exception is integrated into a practical application, we identify whether there
are “any additional elements recited in the claim beyond the judicial
exception(s)” and evaluate those elements to determine whether they
integrate the judicial exception into a recognized practical application.
84 Fed. Reg. at 54–55 (emphasis added); see also Manual of Patent
Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018).
Here, we find the additional limitation(s) do not integrate the judicial
exception into a practical application. More particularly, the claims do not
recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state
(see MPEP § 2106.05(c)); or (iv) any other meaningful limitation
(see MPEP § 2106.05(e)). See 84 Fed. Reg. at 55.
Rather, the additional limitations merely refine elements of the
abstract idea (e.g., defining the current pool of assets or a turn time target) or
recite receiving an identification of customer defined areas, which are used
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in determining the claimed current pool of assets (i.e., assets located within
the customer defined landmark areas). Similarly the additional limitations
recited in the dependent claims merely refine aspects of the abstract idea.
For example, dependent claims 36 and 37 recite considerations when
determining the ranked list; dependent claims 38 and 40 merely describe
information contained within position reports (i.e., arrival and departure
times of assets); and dependent claims 39 and 41 define the source of arrival
and departure times as being the result of analyzing motion-sensor data.
Gathering of data as input for further processing is the type of extra-
solution activity (i.e., in addition to the judicial exception) the courts have
determined insufficient to transform judicially excepted subject matter into a
patent-eligible application. See MPEP § 2106.05(g); see also Bilski v.
Kappos, 561 U.S. 593, 612 (2010) (holding the use of well-known
techniques to establish inputs to the abstract idea as extra-solution activity
that fails to make the underlying concept patent eligible); Elec. Power,
830 F.3d at 1355 (explaining that “selecting information, by content or
source, for collection analysis, and display does nothing significant to
differentiate a process from ordinary mental processes”). Further, the
generic recitation that the steps are performed by the “operation center,” a
“user computing device,” or a “load planner system” does not integrate the
judicial exception into a practical application.
Contrary to Appellant’s assertions (see App. Br. 11–12), causing one
or more of the assets to depart from the landmark area, thereby adjusting the
current pool of available assets, is not a transformation that confers patent
eligibility to the instant claims. “[T]ransformation and reduction of an
article ‘to a different state or thing’ is the clue to patentability of a process
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claim that does not include particular machines.” Bilski, 561 U.S. at 604
(quoting Gottschalk v. Benson, 409 U.S. 63, 70 (1972)); see also MPEP
§ 2106.05(c). Here, there is no transformation of the assets. Instead, as the
Examiner explains (see Ans. 8), causing one or more assets to depart a
landmark area (and resulting in an adjustment to the current pool of assets in
the landmark area) describes an intended result and is simply an application
of the assignment instruction—an extra-solution activity. See MPEP
§ 2106.05(g); cf. Diamond v. Diehr, 450 U.S. 175, 184 (1981) (describing
the “transformation of an article, in this case raw, uncured synthetic rubber,
into a different state”).
For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to “significantly more” than
the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 77–
79). As stated in the Office Guidance, many of the considerations to
determine whether the claims amount to “significantly more” under step two
of the Alice framework are already considered as part of determining
whether the judicial exception has been integrated into a practical
application. 84 Fed. Reg. at 56. Thus, at this point of our analysis, we
determine if the claims add a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
field, or simply append well-understood, routine, conventional activities at a
high level of generality. 84 Fed. Reg. at 56. “Whether something is well-
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understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination.” Berkheimer, 881 F.3d at 1369.
Here, Appellant’s claims do not recite specific limitations (or a
combination of limitations) that are not well-understood, routine, and
conventional. As the Examiner finds, our reviewing court has recognized
that receiving, processing, and storing data; electronic recordkeeping; and
receiving or transmitting data over a network are well-understood, routine
and conventional activities. Final Act. 7–8; Ans. 8. Consistent with the
Berkheimer Memorandum,4 we agree with the Examiner’s findings that the
claims merely recite generic computer components (e.g., a computing device
comprising a processor and memory) performing generic computing
functions that are well-understood, routine, and conventional (e.g., receiving
and transmitting data, processing data, and presenting the results of the data
processing). See Mortgage Grader, Inc. v. First Choice Loan Servs. Inc.,
811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (generic computer components,
such as an “interface,” “network,” and “database,” fail to satisfy the
inventive concept requirement); Alice, 573 U.S. at 226 (“Nearly every
computer will include a ‘communications controller’ and a ‘data storage
unit’ capable of performing the basic calculation, storage, and transmission
functions required by the method claims.”); buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends
the information over a network—with no further specification—is not even
arguably inventive.”); I/P Engine, Inc. v. AOL Inc., 576 F. App’x 982, 986

4 See Berkheimer Memorandum 3–4 (explaining that sufficient support for a
finding that an element was well-understood, routine, or conventional may
be shown by citation to one or more court decisions noting the well-
understood, routine, conventional nature of the element(s)).
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(Fed. Cir. 2014) (“search engines, content-based filtering, and collaborative
filtering were all well-known in the art”).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claims 35–54
under 35 U.S.C. § 101.

DECISION
Claims Rejected Basis Affirmed Reversed
35–54 35 U.S.C. § 101 35–54
Overall Outcome 35–54

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.
§ 41.50(f).

AFFIRMED