NEC Laboratories Europe GmbH

Patent Trials and Appeals Board

Jun 30, 2021

2020005100 (P.T.A.B. Jun. 30, 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.
15/439,979 02/23/2017 Konstantinos Gkiotsalitis 815603 5804
95683 7590 06/30/2021
Leydig, Voit & Mayer, Ltd. (Frankfurt office)
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
06/30/2021 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):
chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KONSTANTINOS GKIOTSALITIS and ODED CATS
____________

Appeal 2020-005100
Application 15/439,9791
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI,
ROBERT J. SILVERMAN, Administrative Patent Judges.

Opinion dissenting in part filed by SILVERMAN, Administrative Patent
Judge.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection2 of claims 1–15. We have jurisdiction under 35
U.S.C. § 6(b). A hearing was held on April 15, 2020.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies NEC Laboratories Europe GmbH
as the real party in interest.
2 All references to the Final Office Action refer to the Final Office Action
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SUMMARY OF DECISION
We affirm and enter a new ground under 37 CFR § 41.50(b) .
THE INVENTION
Appellant states the “invention relates to a method for allocating
frequencies of transit services, such as public transportation systems, to a
computer system for allocating the frequencies, to electronic displays with
dynamically updateable service schedules and to a transportation system
comprising a plurality of vehicles implementing the method.” Spec. ¶ 2.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1 A method of dynamically allocating frequency settings of
a transit service, the method comprising:
utilizing Automatic Vehicle Location (AVL) and
Automated Passenger Counting (APC) data so as to determine
travel time and demand variations within a day;
forming clusters of time periods within the day based on
the determined travel time and demand variations and splitting
the day into the time periods;
computing, for each of the time periods for which a new
frequency setting will be allocated, frequency allocation ranges
within which waiting times at multi-modal transfer stops are
reduced and selecting a frequency allocation using criteria
including at least a passenger demand coverage, an operational
costs reduction and a total multi-modal travel time reduction;
computing a plurality of frequency setting solutions using
a Branch and Bound approach with Sequential Quadratic
Programming (SQP) or a sequential genetic algorithm with
exterior point penalization;
testing sensitivity of the frequency setting solutions

mailed on January 17, 2020.
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against different travel time and demand scenarios so as to
determine a most operationally reliable frequency setting
solution;
providing the most operationally reliable frequency setting
solution as the new frequency setting to a command center of the
transit service; and
updating a timetable of the transit service to include the
new frequency setting.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Claims 1–15 are rejected under 35 U.S.C. § 101 as being directed to
an abstract idea without significantly more.
Claims 1, 2, 4–9, 11, and 13–15 are rejected under 35 U.S.C. § 103 as
being unpatentable over Koehler et al., Iterative Quadratic Optimization for
the Bus Holding Control Problem, IEEE TRANSACTIONS ON INTELLIGENT
TRANSPORTATION SYSTEMS, VOL. 12, NO. 4, December 2011, in view of
Huang et al., US 2015/0294430 A1, published October 15, 2015 and in
further view of Sven Leyffer, Integrating SQP and Branch and Bound for
Mixed Integer Nonlinear Programming, COMPUTATIONAL OPTIMIZATION
AND APPLICATIONS 18, 295–309, November 9, 1998.
Claims 3 and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Koehler, view of Huang et al., and in further view of
Michael Patriksson, Robust Bi-Level Optimization Models in Transportation
Science, PHILOSOPHICAL TRANSACTIONS: MATHEMATICAL, PHYSICAL AND
ENGINEERING SCIENCES, VOL. 366, NO. 1872, 2008.
Claim 10 is rejected under 35 U.S.C. § 103 as being unpatentable over
Koehler in view of Huang et al. and Leyffer as applied to claim 1 above, and
further in view of Daum et al. US 2007/0260497 A1, published November 8,
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2007.
FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 4–6 in the
Final Office Action and on pages 4–6 in the Examiner’s Answer, concerning
only the 35 U.S.C. § 101 rejection.
ANALYSIS
35 U.S.C. § 101 REJECTION
The decision of the Examiner to reject claims 1–15 under 35 U.S.C.
§ 101 is affirmed but, because our rationale is substantially different from
that used by the Examiner. That is, the Examiner’s analysis found that the
claims recite both “a method for managing personal behavior” and “the
calculations could be considered a mathematical concept or a mental
process.” (Final Act. 2). In our decision below, we direct our analysis to the
mathematical concept aspect of the Examiner’s finding. As such, we
denominate this as new grounds of rejection under 37 C.F.R. § 41.50(b).
The Appellant argues claims 1–15 as a group. (Appeal Br. 5). We
select claim 1 as the representative claim for this group, and so the
remaining claims stand or fall with claim 1. See 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).
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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.
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 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
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products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula 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 (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.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
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(“Guidance”).3 “All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Id. at 51;4 see also October
2019 Update at 1.
Under the 2019 Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5
Guidance, 84 Fed. Reg. at 52–55.

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
4 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04 and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
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.”). Accordingly, Appellant’s arguments challenging the
sufficiency of the Examiner’s rejection will not be addressed to the extent
those arguments are based on now superseded USPTO guidance.
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at 54–
55.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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.
Guidance, 84 Fed. Reg. at 52–56. 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 Enfish,
822 F.3d 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 §§ 2106.04–2106.05.
The Specification states:
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Fan, W. and R. B. Machemehl, Tabu in ‘Search strategies for the
public transportation network optimizations with variable transit
demand,’ Computer-Aided Civil and Infrastructure Engineering,
Vol. 23, No. 7, 2008, pp. 502-520 considered finally stochastic
parameters such as demand, arrival times, boarding/alighting times,
and travel times. Those works take into account multiple factors for
setting the bus frequencies over different time periods of the day
which result to static timetables and are the outcome of the tactical
planning phase of bus operations (an example is presented in Table
1 considering the simplistic case of a bus operator who operates
only four services for demonstration purposes).
Spec. ¶ 4.
According to an embodiment of the present invention, an
automated dynamic splitting of time periods of different days
based on demand/travel time variation probability distance of all
bus services is performed for allocating different frequencies at
those periods. This means that different days might be split in
different time periods as presented in FIG. 2. As an initial step,
the demand and travel time records of one day are utilized for all
bus services in a city network. Then, the demand and travel time
patterns are analyzed to find the time periods of the day within
which the travel time and demand variations at all bus services
are relatively homogeneous and apply clustering (different time
periods of the day are clustered by comparing the distance
between the travel time variation values and the demand
variation values).
Spec. ¶ 27.
The preamble of claim 1 states it is for “dynamically allocating
frequency settings of a transit service.” Claim 1 recites in pertinent part:
forming clusters of time periods within the day based on the
determined travel time and demand variations and splitting the
day into the time periods;
computing, for each of the time periods for which a new
frequency setting will be allocated, frequency allocation ranges
within which waiting times at multi-modal transfer stops are
reduced and selecting a frequency allocation using criteria
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including at least a passenger demand coverage, an operational
costs reduction and a total multi-modal travel time reduction;
computing a plurality of frequency setting solutions using a
Branch and Bound approach with Sequential Quadratic
Programming (SQP) or a sequential genetic algorithm with
exterior point penalization;
testing sensitivity of the frequency setting solutions against
different travel time and demand scenarios so as to determine a
most operationally reliable frequency setting solution; providing
the most operationally reliable frequency setting solution as the
new frequency setting to a … center…; and
updating a timetable of the transit service to include the new
frequency setting.
The Examiner found claim 1:
As drafted, this is, under its broadest reasonable interpretation,
within the Abstract idea grouping of "Methods of Organizing
Human Activity" - advertising, marketing or sales activities or
behaviors; business relations. Other than reciting a "processor,
nothing in the claim elements precludes the step from being a
"Methods of Organizing Human Activity" - advertising,
marketing or sales activities or behaviors; business relations.
Accordingly, the claim recites an abstract idea.
Final Act. 4.
Accordingly, all this intrinsic evidence shows that claim 1 recites
mathematical formulas applied for dynamically allocating frequency settings
using a plural frequency setting solutions employing a Branch and Bound
approach with Sequential Quadratic Programming (SQP) or a sequential
genetic algorithm with exterior point penalization to determine a most
operationally reliable frequency setting solution.
Hence, claim 1 is comprised of a plurality of mathematical formulas
and thus is directed to “mathematical concepts— mathematical relationships,
mathematical formulas or equations, mathematical calculations,” which
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constitute a judicial exception. Guidance, 84 Fed. Reg. at 52. Each of the
limitations b)–e) of claim 1 shown below is followed by a respective
mathematical formula which is described by the Specification as the basis at
least in part of the involved limitation:
a) utilizing … data so as to determine travel time and demand
variations within a day;
b) forming clusters of time periods within the day based on the
determined travel time and demand variations and splitting the day
into the time periods;

(Spec. ¶ 28)

(Spec. ¶ 29)
c) computing, for each of the time periods for which a new frequency
setting will be allocated, frequency allocation ranges within which
waiting times at multi-modal transfer stops are reduced and
selecting a frequency allocation using criteria including at least a
passenger demand coverage, an operational costs reduction and a
total multi-modal travel time reduction;

(Spec. ¶ 35),

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d) computing a plurality of frequency setting solutions using a Branch
and Bound approach with Sequential Quadratic Programming
(SQP) [is a mathematical formula/numerical solution of constrained
nonlinear optimization6] or a sequential genetic algorithm with
exterior point penalization

;
(Spec. ¶ 40)
e) Testing[/computing] sensitivity of the frequency setting solutions
against different travel time and demand scenarios so as to
determine a most operationally reliable frequency setting solution;

;

(Spec ¶¶ 74, 76).

The limitation, “providing the most operationally reliable frequency
setting solution as the new frequency setting to a command center of the
transit service,” constitutes nothing more than data gathering and/or
outputting result steps considered insignificant extra-solution activities. See
In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611–12 (Fed. Cir.
2016); see also Bilski, 561 U.S. at 610–11 (“Flook stands for the proposition
that the prohibition against patenting abstract ideas ‘cannot be circumvented
by attempting to limit the use of the formula to a particular technological

6 https://www.math.uh.edu/~rohop/fall_06/Chapter4.pdf.
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environment’ or adding ‘insignificant post solution activity.”’) (quoting
Diehr, 450 U.S. at 191–92). That claim 1 recites the word “providing” does
not render the claim attributes of device action because the word “providing”
in its broadest reasonable interpretation consistent with the specification
generically means “to supply or make available7,” which is something we as
humans do every day when talking to provide information to each other.
Turning to the second prong of the “directed to” test, claim 1 requires
no device limitations. The nomenclature given to the data i.e., “AVL” and
“APC” is merely a characterization of data which does not constitute an
additional element. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350
(Fed. Cir. 2016). The only element which is non–data in claim 1 is “a
command center of the transit service.” The recited command center is of
no consequence to claim eligibility, because the “additional element adds
[only] insignificant extra-solution activity to the judicial exception,”8 and it
“does no more than generally link the use of a judicial exception to a
particular technological environment or field of use.”9 Guidance at 55. In
other words, the steps of claim 1 do not recite technological implementation
details for any of the steps. As shown above, other than reciting an extra
solution activity step, the claim is a collection of mathematical formulas
which constitute a judicial exception. Thus, there are no additional elements
which integrate the judicial exception so as to “impose[] a meaningful limit
on the judicial exception.” Guidance at 53. We find that the claims recite

7 https://www.merriam-webster.com/dictionary/provide (last visited
6/21/2092).
8 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed.
Cir. 2011)
9 Bilski, 561 U.S. at 612, and Flook, 437 U.S. at 588–90.
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the judicial exception of a mathematical formula that is not integrated into a
practical application.
That the claims do not preempt all forms of the abstraction or may be
limited to providing data to “a command center of the transit service,” 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, 566 U.S. at 72–73).
Concerning this step the Examiner found the following:
The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements when considered both
individually and as an ordered combination do not amount to
significantly more than the abstract idea. As discussed above
with respect to integration of the abstract idea into a practical
application, the additional elements of "processor" is insufficient
to amount to significantly more.
Final Act. 5. We agree with the Examiner on this step. “[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. They
do not.” Alice, 573 U.S. at 225.
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Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. In short, each step does no more
than require a generic computer to perform generic computer functions. The
claims do not, for example, purport to improve the functioning of the
computer itself. The Specification spells out different generic equipment
and parameters that might be applied using this concept and the particular
steps such conventional processing would entail based on the concept of
information access under different scenarios. See, e.g., Spec. ¶¶ 24, 25.
Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract idea 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.
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis
(utilizing/forming/computing(successively)/testing/providing/updating) and
storing is equally generic and conventional or otherwise held to be abstract.
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)
(holding that sequence of data retrieval, analysis, modification, generation,
display, and transmission was abstract); Two-Way Media Ltd. v. Comcast
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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.
As to the structural claims (11–15), 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
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 (quoting Mayo, 566 U.S. at 72) (alteration in
original). As a corollary, the claims are not directed to any particular
machine.
We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101 (Appeal Br. 5–9; Reply Br. 2–7). 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.
Appellant argues “clams 1-15 provide a practical application,”
because
claims 1-15 recite a method and system to set a most
operationally reliable frequency setting of a transit service
which, in addition to being robust against operational variations,
are also able to reduce waiting times for multi-modal
transfers. . . . By so doing, the present invention effects a number
of improvements in the technical field of transit systems.
(Appeal Br. 7).
We disagree with Appellant because the recitation of a practical
application for an abstract idea is insufficient to transform the abstract idea
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into a patent-eligible invention. Cf. CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (“The Court [in Parker v. Flook,
437 U.S. 584 (1978)] rejected the notion that the recitation of a practical
application for the calculation could alone make the invention patentable.”).
For example, although the information at issue in Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) was limited to the particular
technological environment of power-grid monitoring, this did not “change
its character as information.” Id. at 1353. The claimed “AVL” and “APC”
data is data to a computer machine which is simply binary machine
language, and what it represents is a function of the human mind which is
useful and intelligible only to the human mind, and thus is given no
patentable weight. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
The test for evaluating integration into a practical application
involves:
(a) Identifying whether there are any additional elements recited
in the claim beyond the judicial exception(s); and (b) evaluating
those additional elements individually and in combination to
determine whether they integrate the exception into a practical
application, using one or more of the considerations laid out by
the Supreme Court and the Federal Circuit.

Guidance 54–55. As we found supra, claim 1 recites no additional elements.
Again, the nomenclature given to the data, i.e., “AVL” and “APC” is merely
a characterization of data which does not constitute an additional element.
The only element which is non–data in claim 1 is “a command center of the
transit service.” The recited command center is of no consequence to the
claim eligibility, because the “additional element adds [only] insignificant
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extra-solution activity to the judicial exception,”10 and “an additional
element does no more than generally link the use of a judicial exception to a
particular technological environment or field of use.”11 Guidance at 55.
That is, to the extent that the claims even recite any limitations about a
transit system, the limitation, at best, would link the method to a
technological environment, which does not, in and of itself, render the claim
any less abstract. (See 2019 § 101 Guidance, 84 Fed. Reg. at 55.) That is,
“limiting the claims to the particular technical environment of a transit
service, is, without more,” “insufficient to transform them into patent-
eligible applications of the abstract idea at their core.” Elec. Power Grp.,
830 F.3d at 1354.
Appellant argues,
Prior to the present invention it was not conventional, much less
known, to compute multiple frequency solutions which
considered waiting times at multi-modal transfer stops or to
select a frequency allocation using criteria including a total
multi-modal travel time reduction. Nor was it conventional or
known to compute a plurality of frequency setting solutions and
to test sensitivity of the frequency setting solutions against
different travel time and demand scenarios so as to determine a
most operationally reliable frequency setting solution.
(Appeal Br. 9).
We disagree with Appellant because the alleged improvement lies in
the abstract idea itself, namely, “comput[ing] multiple frequency solutions,”
not to any technological improvement. Id.; see also BSG Tech LLC v.
Buyseasons, Inc., 899 F.3d 1281, 1287–88 (Fed. Cir. 2018). Even if the
advance over the prior art is to “solutions which considered waiting times at

10 CyberSource, 654 F.3d at 1375.
11 Bilski, 561 U.S. at 612, and Flook, 437 U.S. at 588–90.
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19

multi-modal transfer stops” (id.), that purported advance is an abstract idea
itself, like, e.g., performing a market analysis, a fundamental economic
process or practice similar to hedging against financial risk in Bilksi, 561
U.S. at 609, and collecting and analyzing investment data in SAP America,
898 F.3d at 1167–68, using conventional technology. Moreover, concerning
Appellant’s contention that the claims are “not conventional, much less
known” we note that “the addition of merely novel or non-routine
components to the claimed idea [does not] necessarily turn[] an abstraction
into something concrete.” See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014)
For the reasons identified above, we sustain the Examiner’s § 101
rejection of claims 1–15.
35 U.S.C. § 103 REJECTION
Each of independent claims 1 and 11 recite:
computing a plurality of frequency setting solutions using
a Branch and Bound approach with Sequential Quadratic
Programming (SQP) or a sequential genetic algorithm with
exterior point penalization; [and]
testing sensitivity of the frequency setting solutions
against different travel time and demand scenarios so as to
determine a most operationally reliable frequency setting
solution.
We agree with Appellant that Koehler does not teach or suggest the
features of “computing a plurality of frequency setting solutions” and
“testing sensitivity of the frequency setting solutions against different travel
time and demand scenarios so as to determine a most operationally reliable
frequency setting solution.” See Appeal Br. 11–12, Reply Br. 9. Rather
than testing a plurality of multiple solutions, Koehler determines a single
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solution, which is not tested, as recited in claim 1. See Id. According to
Koehler,
The optimal solution is a sequence of holding control actions
given by h*ἰῳ for the whole horizon. In practice, only the holding
calculated for the next stop is used. In the event of a bus leaving
a stop, data are collected, and a new calculation is done. As such,
frequent updates of the control decisions are made to compensate
for the mismatch between predictions of the deterministic model
and the actual stochastic behavior of the bus operation.

Koehler, page 1572. As such, because Koehler discloses the singular
“optimal solution” using the one formula h*ἰῳ, the claimed “computing a
plurality of frequency setting solutions” and “testing sensitivity of the
plurality of frequency setting solutions” is not met by Koehler.
Since claims 2–10 and 12–15 depend from claims 1 and 11, and since
we cannot sustain the rejection of claims 1 and 11, the rejection of the
dependent claims likewise cannot be sustained.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–15 under
35 U.S.C. § 101.
We conclude the Examiner did err in rejecting claims 1–15 under
35 U.S.C. § 103.
DECISION SUMMARY
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 CFR § 41.50(b) also provides that the appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
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one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner . . . .
• (2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record . . . .
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).
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/
Basis
Affirmed Reversed New
Ground
1–15 101 Eligibility 1–15
1, 2, 4–9,
11, 13–15
103 Koehler,
Haung,
Leyffer
1, 2, 4–9,
11, 13–15

3, 12 Koehler,
Haung,
Patriksson
3, 12
10 Koehler,
Haung,
Leyffer, Daum
10
1–15 101 Eligibility 1–15
Overall
Outcome
1–15 1–15

AFFIRMED 37 C.F.R. § 41.50(b)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KONSTANTINOS GKIOTSALITIS and ODED CATS

Appeal 2020-0051001
Application 15/439,979
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge, dissenting in part.

I join the Decision of the panel majority, in regard to the obviousness
issue. However, for the reasons below, I respectfully dissent, in regard to
aspects of the majority’s determinations on issue of subject-matter
eligibility.
I. Legal Framework for Subject Matter Eligibility
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. Yet, subject matter belonging to any of the statutory

1 As in the panel majority’s Decision (“Decision”), the word “Appellant,”
herein, refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant
identifies the real party in interest as NEC Laboratories Europe GmbH.
Appeal Br. 1.
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2
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted 35 U.S.C. § 101 to exclude laws of nature, natural
phenomena, and abstract ideas, because they are regarded as the basic tools
of scientific and technological work, such that including them within the
domain of patent protection would risk inhibiting future innovation premised
upon them. Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013).
Evaluating subject matter eligibility involves a two-step framework
for “distinguish[ing] between patents that claim the buildin[g] block[s] of
human ingenuity and those that integrate the building blocks into something
more, thereby transform[ing] them into a patent-eligible invention.” Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 88–89 (2012)
(internal quotation marks omitted)). The first step determines whether the
claim is directed to judicially excluded subject matter (such as a so-called
“abstract idea”); the second step determines whether there are any
“additional elements” recited in the claim that (either individually or as an
“ordered combination”) amount to “significantly more” than the identified
judicially excepted subject matter itself. Id. at 217–18.
In 2019, the USPTO published revised guidance on the application of
§ 101, in accordance with judicial precedent. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 Under the 2019 Revised Guidance, a claim is

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
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“directed to” an abstract idea, only if the claim recites any of (1)
mathematical concepts, (2) certain methods of organizing human activity,
and (3) mental processes — without integrating such abstract idea into a
“practical application,” i.e., without “apply[ing], rely[ing] on, or us[ing] 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.” Id. at 52–55. The considerations
articulated in MPEP § 2106.05(a)–(c) and (e)–(h) bear upon whether a claim
element (or combination of elements) integrates an abstract idea into a
practical application. Id. at 55 (referring to MPEP 9th ed. Rev. 08.2017, rev.
Jan. 2018). A claim that is “directed to” an abstract idea constitutes
ineligible subject matter, unless the claim recites an additional element (or
combination of elements) amounting to significantly more than the abstract
idea. Id. at 56.
Although created “[i]n accordance with judicial precedent,” the 2019
Revised Guidance enumerates the analytical steps differently than the
Supreme Court’s Alice opinion. 2019 Revised Guidance, 84 Fed. Reg. at 52.
Step 1 of the 2019 Revised Guidance addresses whether the claimed subject
matter falls within any of the statutory categories of 35 U.S.C. § 101. Id.
at 53–54. Step 2A, Prong One, concerns whether the claim at issue recites
ineligible subject matter; if an abstract idea is recited, Step 2A, Prong Two,
addresses whether the recited abstract idea is integrated into a practical

2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf). The Manual of Patent Examining
Procedure (“MPEP”) incorporates the revised guidance and subsequent
updates at § 2106 (9th ed. Rev. 10.2019, rev. June 2020).
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4
application. Id. at 54–55. Unless such integration exists, the analysis
proceeds to Step 2B, in order to determine whether any additional element
(or combination of elements) amounts to significantly more than the
identified abstract idea, which would render a claim patent-eligible, even
though it is directed to judicially excepted subject matter. Id. at 56.
II. Analysis of the Appealed Rejection Under § 101
Independent claim 1, which may be regarded as exemplary for the
present analysis, recites:
1. A method of dynamically allocating frequency
settings of a transit service, the method comprising:
utilizing Automatic Vehicle Location (AVL) and
Automated Passenger Counting (APC) data so as to determine
travel time and demand variations within a day;
forming clusters of time periods within the day based on
the determined travel time and demand variations and splitting
the day into the time periods;
computing, for each of the time periods for which a new
frequency setting will be allocated, frequency allocation ranges
within which waiting times at multi-modal transfer stops are
reduced and selecting a frequency allocation using criteria
including at least a passenger demand coverage, an operational
costs reduction and a total multi-modal travel time reduction;
computing a plurality of frequency setting solutions using
a Branch and Bound approach with Sequential Quadratic
Programming (SQP) or a sequential genetic algorithm with
exterior point penalization;
testing sensitivity of the frequency setting solutions
against different travel time and demand scenarios so as to
determine a most operationally reliable frequency setting
solution;
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5
providing the most operationally reliable frequency
setting solution as the new frequency setting to a command
center of the transit service; and
updating a timetable of the transit service to include the
new frequency setting.
A. Step 1
There is no question that the claims in the Appeal are within the
statutory categories of § 101. See Final Act 4.
B. Step 2A, Prong One
In rejecting the claims, the Examiner summarizes the limitations of
the independent claims involved in the Appeal (claims 1 and 11):
Claim 1 recites a method for allocating frequency of a
transit services, and Claim 11 recites a system for allocating
frequency of a transit services, which includes obtaining
utilizing Automatic Vehicle Location and Automated Passenger
Counting, forming clusters of time periods and splitting the day
into time periods, computing a frequency setting, selecting a
frequency allocation, computing frequency using Branch and
Bound or sequential genetic algorithm, testing sensitivity of
frequency, providing frequency setting solution and updating a
time table to include frequency setting.
Final Act. 4.
Addressing claims 1 and 11 together, in regard to the inquiry of Step
2A, Prong One, the Examiner states:
[T]his is, under its broadest reasonable interpretation, within the
Abstract idea grouping of “Methods of Organizing Human
Activity” — advertising, marketing or sales activities or
behaviors; business relations. Other than reciting a
“processor,[”] nothing in the claim elements precludes the step
from being a “Methods of Organizing Human Activity” —
advertising, marketing or sales activities or behaviors; business
relations. Accordingly, the claim recites an abstract idea.
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Final Act. 4. See also Answer 4 (“[T]he claims are directed to allocating
frequency of a transit service, which is a method for managing business
behavior related to transportation logistics.” “The claims represent a
logistical decision for allocating transportation resources, which is a method
of managing personal behavior related to decision making. As such, the
claims represent a ‘certain method or organizing human activity.’”)
The Examiner does not explicitly delineate which of the summarized
limitations of claim 1 (see Final Act. 4) amount to the identified judicial
exception. Indeed the Examiner’s summary of the claim language,
accompanying the Step 2A, Prong One, discussion (id.), includes
“Automatic Vehicle Location” and “Automated Passenger Counting” —
features that the Examiner elsewhere characterizes as “additional elements”
that do not describe the judicial exception (id. at 5–6).
In any event, there does not appear to be an adequate basis for
Examiner’s determination that the claimed subject matter — characterized
by the Examiner, for example, as “allocating frequency of a transit service”
(Answer 4) — would constitute an ineligible method of organizing human
activity, under the 2019 Revised Guidance (id.). The 2019 Revised
Guidance describes the judicial exception category of “[c]ertain methods of
organizing human activity” as involving:
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions).
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2019 Revised Guidance, 84 Fed. Reg. at 52. The Examiner states that the
Appellant’s claims pertain to “advertising, marketing or sales activities or
behaviors; business relations.” Final Act. 4. Yet, it is not apparent how any
of the claim limitations would constitute any such activities. Nor does the
Examiner adequately explain such a classification. The Examiner states, for
example, “the claims are directed to allocating frequency of a transit service,
which is a method for managing business behavior related to transportation
logistics.” Answer 4. But, simply asserting that particular could be part of a
“business” does not establish that a claim recites ineligible methods of
organizing human activity. Notably, claim 1 nowhere refers to human
behavior or interactions. The Examiner also states that “[t]he claims
represent a logistical decision for allocating transportation resources, which
is a method of managing personal behavior related to decision making.” Id.
Yet, it is unclear how claim 1 might involve “managing personal behavior”
(id.), because there does not appear to be any personal behavior recited in
the claim.
The Examiner also states, without clearly identifying any
corresponding claim limitations, that — in addition to reciting a judicial
exception in the form of a method of organizing human activity — “the
calculations could be considered a mathematical concept or a mental
process.” Final Act. 2.
Insofar as the Examiner might regard the claims as reciting a mental
process, the rejection should not be sustained. Again, as an initial matter,
the Examiner does not clearly delineate the limitations that would
purportedly describe a mental process judicial exception. Moreover, the
Examiner has not set forth any basis for determining that the corresponding
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8
claim limitations could “practically be performed in the mind” (2019
Revised Guidance, 84 Fed. Reg. at 52 n.14).
The panel majority (see Decision, slip op. 10–13) pursues the
Examiner’s other alternative position — i.e., that portions of the independent
claims “could be considered a mathematical concept” (Final Act. 2).
The 2019 Revised Guidance describes the “[m]athematical concepts”
judicial exception grouping as encompassing “mathematical relationships,
mathematical formulas or equations, [and] mathematical calculations.” 2019
Revised Guidance, 84 Fed. Reg. at 52.
Mathematical description has long been regarded as fundamental and
essential for the development of science and technology. In the seventeenth
century, for example, Galileo articulated this understanding:
Philosophy is written in this grand book, the universe, which
stands continually open to our gaze. But the book cannot be
understood unless one first learns to comprehend the language
and read the letters in which it is composed. It is written in the
language of mathematics, and its characters are triangles,
circles, and other geometric figures without which it is humanly
impossible to understand a single word of it; without these, one
wanders about in a dark labyrinth.
Galileo Galilei, The Assayer (1623), selection in Stillman Drake, trans.,
Discoveries and Opinions of Galileo, 231–280, at 237–38 (1957).
Consequently, mathematics is often unavoidable for describing technology.
Yet, if the natural world is understood to behave mathematically, then such
mathematical properties are the very sort of subject matter that the Supreme
Court has endeavored to exclude from patent eligibility. “[P]atents cannot
issue for the discovery of the phenomena of nature,” which “like the heat of
the sun, electricity, or the qualities of metals, are part of the storehouse of
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knowledge of all men” or “manifestations of laws of nature, free to all men
and reserved exclusively to none.” Funk Bros. Seed Co. v. Kalo Inoculant
Co., 333 U.S. 127, 130 (1948) (citation omitted). Similarly, the Supreme
Court stated that “a principle is not patentable,” because “[a] principle, in the
abstract, is a fundamental truth; an original cause; a motive; these cannot be
patented, as no one can claim in either of them an exclusive right.” Le Roy
v. Tatham, 55 U.S. 156, 175 (1852).
Yet, the ubiquity of mathematics and mathematical concepts in
technological discourse exemplifies the Supreme Court’s recognition that
“[a]t some level, all inventions . . . embody, use, reflect, rest upon, or apply
of nature, natural phenomena, or abstract ideas,” which are “the basic tools
of scientific and technological work.” Alice, 573 U.S. at 217 (citations and
internal quotation marks omitted). Therefore, the Supreme Court
admonishes, “we tread carefully in construing this exclusionary principle
lest it swallow all of patent law.” Id.
Accordingly, subject-matter eligibility jurisprudence has reflected a
conundrum, regarding the role of mathematics in patent claims — that is,
mathematics may be indispensable for describing an invention, but the
underlying processes (amenable to expression, in mathematical terms)
cannot be patented. Balancing these opposing concerns, the Supreme Court,
in Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86
(1939), addressed a patent claim that included a “scientific truth” that was
described in mathematical form:
Abraham’s formula expressed the scientific truth that when
radio activity is projected from a charged wire of finite length,
i.e., one having standing waves, and having a length of a
multiple of half wave lengths, the angle between the direction
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of the principal radio activity and the wire is dependent on
wave length and wire length, which is a multiple of half wave
lengths.
Mackay, 306 U.S. at 93–94. Applying this “scientific truth” to the design of
an antenna with wires arranged at an angle, the claimed invention
consisted in taking the angle of the Abraham formula as the
angle between each wire of the V antenna and its bisector. By
so doing [the patentee] brought the cones of principal radio
activity, each having one of the wires of the antenna as its axis,
into conjunction at their periphery and along the bisector of the
angle between the wires, and thus established there the greatest
directional radio activity.
Id. at 94. The Supreme Court explained: “While a scientific truth, or the
mathematical expression of it, is not patentable invention, a novel and useful
structure created with the aid of knowledge of scientific truth may be.” Id.
Consequently, the Supreme Court determined that the claims, “achieved by
the logical application of a known scientific law to a familiar type of
antenna,” constituted patent-eligible subject matter. Id. Viewed through the
prism of the 2019 Revised Guidance, the question of whether such an
“application of a known scientific law” (id.) might amount to patent-eligible
subject matter, would be addressed in Step 2A, Prong Two, and/or Step 2B.
Whereas Mackay, 306 U.S. at 95, involved a mathematical description
of a “scientific truth” of electromagnetic radiation, a later Supreme Court
decision, Gottschalk v. Benson, 409 U.S. 63 (1972), addressed properties of
number systems themselves, separated from any physical constraints. The
Supreme Court described the claimed subject matter as “a method for
converting binary-coded decimal (BCD) numerals into pure binary
numerals.” Benson, 409 U.S. at 64. The Supreme Court regarded the
conversion of one type of numerical representation into another as a “law of
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nature.” Id. at 67 (quoting Funk Bros., 333 U.S. at 130). Indeed, in a later
case, the Supreme Court put a finer point on this determination: “Reasoning
that an algorithm, or mathematical formula, is like a law of nature, Benson
applied the established rule that a law of nature cannot be the subject of a
patent.” Parker v. Flook, 437 U.S. 584, 589 (1978).
Flook also involved the patent eligibility of claims that included a
mathematical formula — specifically, a technique for updating an “alarm
limit” (which “may signal the presence of an abnormal condition”) of a
catalytic conversion process. Flook, 437 U.S. at 585. The claims described
calculating “an updated alarm limit,” in view of “the original alarm base, the
appropriate margin of safety, the time interval that should elapse between
each updating, the current temperature (or other process variable), and the
appropriate weighting factor to be used to average the original alarm base
and the current temperature.” Id. at 586.
Like Benson, Flook relies upon an understanding that the
mathematical content of the claimed subject matter has the character of a
natural law, which may not be patented. Notably, Flook analogizes the
claims to the fundamental mathematical principles of the Pythagorean
theorem and the formula for the circumference of a circle (2πr). Id. at 590,
595.
In addition, Flook regards mathematical operations themselves —
stripped of content and context — as judicial exceptions to patent eligibility.
The “respondent’s claim,” Flook explains, “is, in effect, comparable to a
claim that the formula 2πr can be usefully applied in determining the
circumference of a wheel.” Id. at 595. Yet, “if a claim is directed
essentially to a method of calculating, using a mathematical formula, even if
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12
the solution is for a specific purpose, the claimed method is nonstatutory.”
Id. (quoting In re Richman, 563 F.2d 1026, 1030 (CCPA 1977)) (internal
quotation marks omitted). In other words, the calculation of circumference
remains the same, regardless of whether the circular context is a wheel, a
dinner plate, or a poker chip — and the type of object (possessing the
circumference) would have no bearing on the patent-eligibility of the
calculating operation.
The Supreme Court also addressed issues of mathematical judicial
exceptions, in Diamond v. Diehr, 450 U.S. 175, 177–79 (1981) —
specifically, the eligibility of certain patent claims relating to a process for
molding and curing synthetic rubber, which recited Arrhenius’ mathematical
equation for describing the progress of chemical reactions. In view of, e.g.,
Mackay, Benson, and Flook, Diehr explains: “when a claim recites a
mathematical formula (or scientific principle or phenomenon of nature), an
inquiry must be made into whether the claim is seeking patent protection for
that formula in the abstract.” Id. at 191. Notably, “Arrhenius’ equation is
not patentable in isolation, but when a process for curing rubber is devised
which incorporates in it a more efficient solution of the equation, that
process is at the very least not barred at the threshold by § 101.” Id. at 188.
Indeed, such “[i]ndustrial processes . . . have historically been eligible to
receive the protection of our patent laws.” Id. at 184. The Supreme Court
emphasized the interrelationship of the implementation of Arrhenius’
equation with other claimed features (which were not regarded as patent-
ineligible subject matter):
[T]he respondents here do not seek to patent a mathematical
formula. Instead, they seek patent protection for a process of
curing synthetic rubber. Their process admittedly employs a
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13
well-known mathematical equation, but they do not seek to pre-
empt the use of that equation. Rather, they seek only to
foreclose from others the use of that equation in conjunction
with all of the other steps in their claimed process. These
include installing rubber in a press, closing the mold, constantly
determining the temperature of the mold, constantly
recalculating the appropriate cure time through the use of the
formula and a digital computer, and automatically opening the
press at the proper time.
Id. at 187.
Although claim language whittled down to a mere mathematical
operation might seem, in some instances, a slender reed on which to support
a judicial exclusion, the Supreme Court has explained a reason for such an
approach — specifically, that its “cases have not distinguished among
different laws of nature according to whether or not the principles they
embody are sufficiently narrow” to avoid the concern of impairing future
innovation. Mayo, 566 U.S. at 88–89. The Supreme Court, in Mayo,
emphasized that “[a] patent upon a narrow law of nature may not inhibit
future research as seriously as would a patent upon Einstein’s law of
relativity, but the creative value of the discovery is also considerably
smaller”; yet, the patenting of “even a narrow law of nature . . . can inhibit
future research.” Id. at 88. Furthermore, “[c]ourts and judges are not
institutionally well suited to making the kinds of judgments needed to
distinguish among different laws of nature”; accordingly, “the cases have
endorsed a bright-line prohibition against patenting laws of nature,
mathematical formulas and the like, which serves as a somewhat more easily
administered proxy for the underlying ‘building-block’ concern.” Id. at 89.
This approach, although arguably unnecessarily procrustean and over-
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inclusive, demands a careful consideration of the precise claim language
reciting such building blocks of invention.
A further complication, in identifying a judicially excepted
mathematical concept, stems from the understanding that a single patent
claim may recite multiple judicial exceptions. See Genetic Techs. Ltd. v.
Merial LLC, 818 F.3d 1369, 1374–75, 1379 (Fed. Cir. 2016) (Claim to a
method for analyzing DNA recited both the law of nature of linkage
disequilibrium and the mental process of examining a non-coding region to
detect an allele in the coding region). See also MPEP § 2106.04(II)(B)
(“Evaluating Claims Reciting Multiple Judicial Exceptions”). Therefore,
even where mathematical features are included in claim language, courts do
not always base eligibility determinations upon the presence of a
mathematical-concept judicial exception. For example, in Bilski v. Kappos,
561 U.S. 593 (2010), the Supreme Court determined that both independent
claims at issue (claims 1 and 4) “explain the basic concept of hedging, or
protecting against risk” and both claims were deemed ineligible, even
though claim 4 (but not claim 1) “reduced” the “concept of hedging” “to a
mathematical formula.” Bilski, 561 U.S. at 611. The critical aspect of the
claim language was not any use of mathematical language, but, rather, the
recitation of a fundamental economic practice. Id. See also Alice, 573 U.S.
at 220 (“One of the claims in Bilski reduced hedging to a mathematical
formula, but the Court did not assign any special significance to that fact,
much less the sort of talismanic significance petitioner claims. Instead, the
Court grounded its conclusion that all of the claims at issue were abstract
ideas in the understanding that risk hedging was a fundamental economic
practice.”) (quoting Bilski, 561 U.S. at 611) (internal quotation marks
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omitted). Similarly, the claim language at issue in Bancorp Servs., L.L.C. v.
Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1270–72 (Fed.
Cir. 2012), included mathematical features, but the Federal Circuit’s
ineligibility determination was based upon the recitation of a mental process.
Id. at 1279 (“Here, in contrast, the computer merely permits one to manage a
stable value protected life insurance policy more efficiently than one could
mentally. Using a computer to accelerate an ineligible mental process does
not make that process patent-eligible.”)
In the instant case, I agree with the majority that exemplary claim 1
recites subject matter falling within the judicial exception category of
mathematical concepts. Most properly, I agree that the exception would
apply to claim 1’s mathematical techniques of “a Branch and Bound
approach with Sequential Quadratic Programming (SQP) or a sequential
genetic algorithm with exterior point penalization.” However, I part ways
with the majority, in regard to the identification of other claim language that
might belong within the exception. In particular, the limitations of “clusters
of time periods within the day based on the determined travel time and
demand variations,” the qualification of “frequency allocation ranges” for
which “waiting times at multi-modal transfer stops are reduced” and the use
of “criteria including at least a passenger demand coverage, an operational
costs reduction and a total multi-modal travel time reduction,” as well as the
“testing sensitivity of the frequency setting solutions” (insofar as the
standard of comparison relates to “different travel time and demand
scenarios so as to determine a most operationally reliable frequency setting
solution”), extend beyond a mathematical “formula in the abstract,” Diehr,
450 U.S. at 191, that is the basis for the exception. This delineation has
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consequences for identifying the “additional elements” and for the related
portions of the analysis — in Step 2A, Prong Two, and/or Step 2B of the
2019 Revised Guidance.
C. Step 2A, Prong Two
As explained below, contrary to the majority’s view, I determine that
the judicial exception is integrated into a practical application (per Step 2A,
Prong Two, of the 2019 Revised Guidance), rendering claim 1 patent-
eligible.
In regard to Step 2A, Prong Two, the Examiner determines that the
identified judicial exception is not integrated into a practical application.
Final Act. 4. According to the Examiner, “[t]he claims primarily recite the
additional element of using a computer to perform each step,” with the
“computer recited at a high-level of generality, such that it amounts no more
than mere instructions to apply the exception using a computer component.”
Id. The Examiner also appears to regard the recited “Automatic Vehicle
Location (AVL)” and “Automated Passenger Counting (APC)” as additional
elements. Id. at 5. The Examiner regards none of the additional elements
“integrat[ing] the abstract idea into a practical application.” Id. at 4.
“In particular,” the Examiner states, “there is a lack of improvement
to a computer or technical field in transit dispatching.” Id. at 5. The
Examiner remains unpersuaded by the Appellant’s position that the claimed
subject matter achieved technological improvements in the following
manner, as argued in the Appeal Brief:
Existing command centers or automated dispatchers technically
were not able, prior to the present invention, to test different
frequencies to determine the most operationally reliable
frequency and could not take into account multimodal waiting
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times. See, for example, paragraphs [0024], [0047] and [0048]
of the original specification. By so doing, the present invention
effects a number of improvements in the technical field of
transit systems. For example, the physical resources of the
transit system (e.g., buses) can be more efficiently utilized (e.g.,
resulting in reductions in operational costs, fuel consumption
and vehicle or road maintenance), more flexibly and with a
higher granularity, and can be effectively integrated with other
mobility services. See, for example, paragraphs [0023], [0047]
of the original specification.
In addition to these improvements to the technical field
of transit systems, it is respectfully submitted that the present
invention provides for improvements also to the computers
themselves which are responsible for controlling the transit
service. For example, paragraph [0025] of the original
specification describes how existing command centers or
automated dispatchers are computer systems which are
configured to perform functions such as allocating frequencies,
as recited in claims 1–15 of the present application. As
quantitatively demonstrated in the present application, the
present invention also technologically improves these computer
systems by providing reduced computational costs for
determining the more operationally reliable frequency settings,
thereby saving computational resources, allowing for faster
computations and/or increasing processing power. See, for
example, FIG. 6 and paragraphs [0025], [0044] and [0080]–
[0081] of the original specification. Thus, it is respectfully
submitted that claims 1–15 also recite improvements in
computer technology.
Appeal Br. 7–8. The Examiner states that Appellant’s assertion of “reducing
operational costs . . . is a business improvement, not a technical
improvement.” Answer 4. See also id. at 5 (“[R]educing waiting times of
customers through a more efficient business process does not provide a
practical application.”) Further, the Examiner states that the Appellant’s
assertions of improving a transit system are insufficient, because they relate
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to the “workflow of decisions” and “[n]o particular improvement to the
hardware is recited.” Id. at 5. In addition, the Examiner states that “there is
no evidence of” the Appellant’s assertions of “increasing processing power”
and achieving “faster computations.” Id. According to the Examiner,
“[r]educing the number of calculations, by using various mathematical
approaches as indicated in Fig. 6 [of the Specification], does not improve the
performance of a machine.” Id.
In my delineation of the mathematical judicial exception of claim 1,
the additional claim elements (i.e., those claim elements that are not part of
the identified judicial exception) include the recited “providing the most
operationally reliable frequency setting solution as the new frequency setting
to a command center of the transit service” and “updating a timetable of the
transit service to include the new frequency setting.”
According to the majority, the “providing” limitation “constitutes
nothing more than data gathering and/or outputting result steps considered
insignificant extra-solution activities.” Decision, slip op. 12. I respectfully
disagree. The “providing” limitation (either alone, or together with the
“updating” limitation), in combination with the other claim limitations,
accomplishes an implementation of the claimed “new frequency setting” for
the “transit service,” in a manner that achieves several improvements and
advantages:
The benefit of allocating new frequency settings in accordance
with embodiments of the present invention have been shown to
result in reduced computational costs to determine more
optimal frequency settings, thereby effecting a direct
improvement of the operation of the computer systems of the
command center. Moreover, the day time splitting with
allocated frequency settings results in reduced operational costs
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of the transit system and decreased passenger waiting times,
thereby effecting improvements in the transit system itself.
Spec. ¶ 25. See also id. ¶ 47, Fig. 6. The improved operation of a “transit
system” — in terms of decreased waiting times and operational costs, for
example — is the type of practical application that should be patent-eligible,
because it “improve[s] an existing technological process.” Alice, 573 U.S. at
223.
Further, contrary to the majority’s determination (see Decision, slip
op. 12–19), the recited combination improves computational time costs, in
comparison with prior art approaches. See Spec. ¶¶ 39–45, Fig. 6. The
majority emphasizes the absence of novel hardware, pointing to the
implementation with “generic equipment and parameters.” Decision, slip
op. 15. Yet, the Federal Circuit has clarified that “[s]oftware can make non-
abstract improvements to computer technology just as hardware
improvements.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016). The improved computational times for a transit system,
addressed in the Specification, constitute the type of improvement that the
Federal Circuit has recognized as indicating patent-eligibility. See id.
(“[O]ur conclusion that the claims are directed to an improvement of an
existing technology is bolstered by the specification’s teachings that the
claimed invention achieves other benefits over conventional databases, such
as increased flexibility, faster search times, and smaller memory
requirements.”)
Accordingly, in my view, the application of the identified
mathematical features of the Appellant’s claim 1 is integrated into a practical
application, in the manner expressed in the 2019 Revised Guidance, Step
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2A, Prong Two. As explained above, claim 1 accomplishes what the
Supreme Court has identified as a patent-eligible application of judicially
excepted subject matter. See Alice, 573 U.S. at 217 (“[A]n 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.”) (citations and internal quotation
marks omitted); Diehr, 450 U.S. 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.”); Funk Bros., 333
U.S. at 130 (“He who discovers a hitherto unknown phenomenon of nature
has no claim to a monopoly of it which the law recognizes. If there is to be
invention from such a discovery, it must come from the application of the
law of nature to a new and useful end.”); Mackay, 306 U.S. at 94 (“While a
scientific truth, or the mathematical expression of it, is not patentable
invention, a novel and useful structure created with the aid of knowledge of
scientific truth may be.”)
III. Conclusion
For the reasons stated above, I would not sustain the rejection under
35 U.S.C. § 101.