Justin N. Smith et al.Download PDFPatent Trials and Appeals BoardSep 3, 201914578535 - (D) (P.T.A.B. Sep. 3, 2019) Copy Citation 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. 14/578,535 12/22/2014 Justin N. Smith AU140211USNP 4695 57572 7590 09/03/2019 MARK NOWOTARSKI 30 Old Kings Highway South Darien, CT 06820 EXAMINER FRENEL, VANEL ART UNIT PAPER NUMBER 3687 NOTIFICATION DATE DELIVERY MODE 09/03/2019 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): MNOWOTARSKI@MARKETSANDPATENTS.COM mark.nowotarski@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JUSTIN N. SMITH, SEAN HUGHES, and JAMES SHASTA DAULTON ____________ Appeal 2018-0035121 Application 14/578,535 Technology Center 3600 ____________ Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and PHILIP J. HOFFMANN, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1 and 5–9. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. 1 Appellants identify Applied Underwriters, Inc., a subsidiary of Berkshire Hathaway Inc., as the real party in interest. (App. Br. 2.) Appeal 2018-003512 Application 14/578,535 2 THE INVENTION Appellants state their invention covers “[a] computer-based prediction system for forecasting the level of risk an employee faces from a terrorist event [which] combines information about where an employee is during a work period versus the amplitudes and radii of terrorist risks the employee may come near.” (Spec. Abstr.) Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A computer-based system comprising: a) a location sensing device moving in conjunction with an employee; b) a microprocessor; c) an output device; and d) a permanent memory comprising computer readable instructions to physically cause said microprocessor to carry out the steps of: i) read in employee location distribution data from said location sensing device, said location distribution data comprising: 1) a first location and a first amount of time spent by said employee at said first location; and 2) a second location and a second amount of time spent by said employee at said second location; ii) read in terror risk distribution data suitable for calculating a probability of terror attack of a given threshold of severity for one or more of said employee locations, said terror risk distribution data comprising: 1) a location of terror risk; 2) an amplitude of terror risk; and 3) a radius of terror risk; iii) calculate a level of risk said employee faces from a terrorist event, said calculation being based on said employee location distribution data and said terror risk distribution data; and Appeal 2018-003512 Application 14/578,535 3 iv) output said calculated level of risk said employee faces from a terrorist event via said output device. THE REJECTION The following rejection is before us for review: Claims 1 and 5–9 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter as the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more. FINDINGS OF FACT We adopt the Examiner’s findings as set forth on pages 2–8 in the Final Office Action2 and on pages 3–11 in the Examiner’s Answer, concerning the 35 U.S.C. § 101 rejection. ANALYSIS 35 U.S.C. § 101 REJECTION We will affirm the rejection of claims 1 and 5–9 under 35 U.S.C. § 101. The Appellants argue3, and we select claim 1 as the representative claim for this group (App. Br. 11–13), and so the remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2015). 2 All references to the Final Office Action refer to the Final Office Action mailed on December 15, 2016. 3 Although Appellants state that “[e]ach claim will be argued separately” (Appeal Br. 7), Appellants on page 9 of the Appeal Brief merely recite the claim limitations of claims 5–9 adding only a general statement about that Appeal 2018-003512 Application 14/578,535 4 Arguments which Appellants could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2015). Except as will be noted in this opinion, Appellants have not presented any substantive arguments directed separately to the patentability of the dependent claims. In the absence of a separate argument with respect to those claims, they stand or fall with the representative independent claim. See In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991). See also 37 C.F.R. § 41.37(c)(1)(iv) (2015). 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. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks and citation omitted). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See id. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 language being an improvement without substantive argument. A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim. See 37 C.F.R. § 41.37 (c)(1)(iv) (2015). Appeal 2018-003512 Application 14/578,535 5 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 (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 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., Diehr, 450 U.S. at 187 (“It is now commonplace that an application of a law of nature or Appeal 2018-003512 Application 14/578,535 6 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 (internal citation 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. The PTO recently published revised guidance on the application of § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human 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 Appeal 2018-003512 Application 14/578,535 7 (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance, 84 Fed Reg. at 56. The U.S. Court of Appeals for the Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, 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. In so doing, as indicated above, we apply a “directed to” two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim “appl[ies], rel[ies] on, or use[s] 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.” Guidance, 84 Fed. Reg. at 53; see also MPEP § 2106.05(a)–(c), (e)–(h). The Specification states: Terrorist risks are difficult to predict. There is very little data available on actual attacks. Thus, most of the work in this area has involved the creation of so-called “Delphic” models, which are produced by creating a group of acknowledged experts on terrorism and having them produce a “catalog” of likely attacks, including details as to method, location, intensity, and timing. Several such inventories have been produced by specialist Appeal 2018-003512 Application 14/578,535 8 catastrophe risk modeling firms and are in use. Most of the details are not in the public domain, but certain included locations and events are known, as is the overall size of a typical catalog, which includes about 250,000 possible events. Employers have used these catalogs to estimate the level of terror an employee faces by looking at the terror risk of said employee’s address of employment. Unfortunately, this method does not take into account the risks employees face when they work away from their formal address of employment. Thus there is a need for a computer-based prediction system for forecasting the level of risk an employee faces that takes into account the location distribution of said employee in the course of said employee’s work. (Spec. 2:15–27.) Understood in light of the Specification, claim 1 recites, in pertinent part: i) read in employee location distribution data . . . , said location distribution data comprising: 1) a first location and a first amount of time spent by said employee at said first location; and 2) a second location and a second amount of time spent by said employee at said second location; ii) read in terror risk distribution data suitable for calculating a probability of terror attack of a given threshold of severity for one or more of said employee locations, said terror risk distribution data comprising: 1) a location of terror risk; 2) an amplitude of terror risk; and 3) a radius of terror risk; iii) calculate a level of risk said employee faces from a terrorist event, said calculation being based on said employee location distribution data and said terror risk distribution data; and iv) output said calculated level of risk said employee faces Appeal 2018-003512 Application 14/578,535 9 from a terrorist event via said output device. Accordingly, the Examiner found that the claims “are directed to a mathematical relationship/formula, such as predicting and calculating a risk.” (Final Act. 2.) We agree with the Examiner that claim 1 is directed to at least a mathematical relationship/formula because the claim recites “calculat[ing] a level of risk said employee faces from a terrorist event, said calculation being based on said employee location distribution data and said terror risk distribution data.”4 Mathematical relationships/formulas are patent- ineligible. Guidance, 84 Fed. Reg. at 52, citing Diehr 450 U.S. 191. We further find that claim 1 is directed to an evaluation because claim 1 recites, “calculate a level of risk said employee faces from a terrorist event, said calculation being based on said employee location distribution data and said terror risk distribution data.” Evaluation is a form of a mental process which is patent ineligible. Guidance, 84 Fed. Reg. at 52, citing Mayo, 566 U.S. at 71. Turning to the second prong of the “directed to” test, claim 1 only generically requires “a) a location sensing device,” “b) a microprocessor,” “c) an output device,” and “d) a permanent memory.” These components are described in the Specification at a high level of generality. (See Spec. 7:8–18, Fig. 1.) We fail to see how the generic recitations of these most basic computer components and/or of a system so integrates the judicial exception as to “impose[] a meaningful limit on the judicial 4 “The Appellant[s] accept[] that the combined limitations of claim l(d)(ii) and claim l(d)(iii) in their broadest reasonable interpretation recite a mathematical relationship/formula.” (Reply Br. 9). Appeal 2018-003512 Application 14/578,535 10 exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53. Thus, we find that the claims recite the judicial exception of a mental process that is not integrated into a practical application. That the claims do not preempt all forms of the abstraction or may be limited to terrorism risk evaluation, does not make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“And that the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract.”). Turning to the second step of the Alice analysis, because we find that the claims are directed to abstract ideas/judicial exceptions, the claims must include an “inventive concept” in order to be patent-eligible, i.e., there must be an element or combination of elements sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself. See Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative Servs., 566 U.S. at 72–73). Concerning this step the Examiner found the following: The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the abstract idea because the generically-recited computer elements (e.g.[,] a computer, a sensing device, a microprocessor and an output device) do not add a meaningful limitation to the idea because the actions, functions, and/or steps performed by the generically-recited computer elements would be routine and conventional in any computer implementations. Because the courts have declined to define “abstract Appeal 2018-003512 Application 14/578,535 11 idea,” other than by example, examiners have been instructed to refer to the body of case law precedent in order to identify abstract ideas by way of comparison to concepts already found to be abstract. (Final Act. 2–3.) We agree with the Examiner. “[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 to read, calculate, output data, generate a result, and transmit and update same amounts to electronic data query and transmit same are some of the most basic functions of a computer. All of these computer functions are well-understood, routine, conventional activities previously known to the industry. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also In re Katz, 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”). In short, each step does no more than require a generic computer to perform generic computer functions. Considered as an ordered combination, the computer components of Appellants’ claims add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis (read, calculate, output data, generate a result) and storing is equally generic and conventional or otherwise held to be abstract. See Ultramercial, Inc. v. Appeal 2018-003512 Application 14/578,535 12 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) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract), Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. Thus, the claims at issue amount to nothing significantly more than instructions to apply the abstract ideas of a mathematical relationship and/or a mental process 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. We have reviewed all the arguments Appellants have submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. § 101. (App. Br. 7–13, Reply Br. 1–16.) We find that our analysis above substantially covers the substance of all the arguments, which have been made. But, for purposes of completeness, we will address various arguments in order to make individual rebuttals of same. First, Appellants’ arguments, including those directed to now- superseded USPTO guidance (App. Br. 10, Reply Br. 7–9), have been considered but are not persuasive of error. See 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.”). Appellants argue, Appeal 2018-003512 Application 14/578,535 13 [c]laim 1 is directed to the concept of “a new and useful technique for using a location sensing device to more efficiently track an employee’s movements and calculate the level of risk said employee faces from a terrorist event”. Thus claim 1 is directed to more than the general concept of using a mathematical formula to calculate a risk or the general concept of calculating a risk an employee faces from a terrorist event. A location sensing device moving in conjunction with an employee must be used. Thus the Examiner has failed to properly identify a judicial exception. (App. Br. 11 (emphasis omitted).) We disagree with Appellants. First, any difference between what the Examiner describes as constituting “directed to matter” and that proposed by the Appellants does not constitute error because such characteristics can be described, at different levels of abstraction, to what the claims are directed, and it is recognized 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). Appellants’ depiction of the “directed to” subject matter includes “using a location sensing device,” but as found above, this limitation is a mere generic recitation of the most basic computer components and/or of a system and fails to integrate the judicial exception as to “impose[] a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Appellants also argue, Since the Examiner has failed to properly identify the additional elements of the claims that go beyond the identified judicial exception, the Examiner has also failed to provide any reasons Appeal 2018-003512 Application 14/578,535 14 why said additional elements do not result in the claim as a whole amounting to significantly more than the judicial exception. The Examiner has also failed to provide any reasons why the additional elements taken as a combination do not result in the claim as a whole amounting to significantly more than the judicial exception. Thus the Examiner has failed to make a prima facie case of nonstatutory subject matter. The Examiner’s rejection of claim 1 and dependent claims 5 to 9 under 35 U.S.C. [§] 101, therefore, cannot be sustained. (App. Br. 12.) We disagree with Appellants. To the extent Appellants argue that the Examiner erred in adequately supporting this determination by not providing evidence, we are unpersuaded. In this regard, there is no requirement that examiners must provide evidentiary support in every case before a conclusion can be made that a claim is directed to an abstract idea. See, e.g., MPEP § 2106.07(a)(III) (“The courts consider the determination of whether a claim is eligible (which involves identifying whether an exception such as an abstract idea is being claimed) to be a question of law. . . . Thus, the court does not require ‘evidence’ that a claimed concept is a judicial exception, and generally decides the legal conclusion of eligibility without resolving any factual issues.” (Internal citations omitted)). Moreover, the Federal Circuit made clear in Berkheimer that “not every § 101 determination contains genuine disputes over the underlying facts material to the § 101 inquiry.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). In fact, the Federal Circuit in Berkheimer did not require evidentiary support for independent claim 1 because “[t]he limitations [of claim 1] amount to no more than performing the abstract idea Appeal 2018-003512 Application 14/578,535 15 of parsing and comparing data with conventional computer components.” Id. at 1370. All that is required of the USPTO to meet its prima facie burden of production is that the Examiner set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of 35 U.S.C. § 132. As the statute itself instructs, the Examiner must “notify the applicant,” “stating the reasons for such rejection,” “together with such information and references as may be useful in judging the propriety of continuing the prosecution of his application.” 35 U.S.C. § 132; see also In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011) (declining “to impose a heightened burden on examiners beyond the notice requirement of § 132”). Here, as we found above, the Examiner has made these findings as required by the statute. (See Final Act. 2–4.) Specifically, in rejecting the pending claims under § 101, the Examiner notified Appellants that the claims “are directed to a mathematical relationship/formula, such as predicting and calculating a risk” (Final Act. 2) and that [t]he claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the abstract idea because the generically-recited computer elements (e.g.[,] a computer, a sensing device, a microprocessor and an output device) do not add a meaningful limitation to the idea because the actions, functions, and/or steps performed by the generically-recited computer elements would be routine and conventional in any computer implementations. (Id. at 2–3.) Thus, we find that a prima facie case was established by the Appeal 2018-003512 Application 14/578,535 16 Examiner. Finally, we disagree with Appellants that “claim 1 is similar to Diehr in that a mathematical relationship is used in a process to solve a technological problem in conventional industry practice.” (Reply Br. 9–10.) In Diehr, the claim was directed to “the transformation of an article, in this case raw, uncured synthetic rubber, into a different state or thing.” Diehr, 450 U.S. at 184. Conversely, at best, independent claim 1 before us here results in the outputting of a calculated risk level, which is not an article but rather is an abstraction. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1 and 5–9 under 35 U.S.C. § 101. Appeal 2018-003512 Application 14/578,535 17 DECISION 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). AFFIRMED Copy with citationCopy as parenthetical citation