Stephen L. Schultz et al.

Patent Trials and Appeals Board

Sep 16, 2019

13689006 - (D) (P.T.A.B. Sep. 16, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/689,006 11/29/2012 Stephen L. Schultz 6338.201 6694
30589 7590 09/16/2019
DUNLAP CODDING, P.C.
PO BOX 16370
OKLAHOMA CITY, OK 73113
EXAMINER
HE, WEIMING
ART UNIT PAPER NUMBER
2612
NOTIFICATION DATE DELIVERY MODE
09/16/2019 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):
docketing@dunlapcodding.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEPHEN L. SCHULTZ and YANDONG WANG
____________________

Appeal 2018-009121
Application 13/689,006
Technology Center 2600
____________________

Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

DIRBA, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 1–10 and 12–20, which are all claims
pending in the application. Although Appellants appeal from a non-final

1 This Decision uses the following abbreviations: “Spec.” for the original
specification, filed November 29, 2012, claiming the benefit of U.S.
provisional patent application 61/564,699; “Non-Final Act.” for the Non-
Final Office Action, mailed June 22, 2017; “App. Br.” for Appellants’
Appeal Brief, filed March 27, 2018; “Ans.” for Examiner’s Answer, mailed
July 24, 2018; and “Reply Br.” for Appellants’ Reply Brief, filed
September 24, 2018.
2 According to Appellants, the real party in interest is Pictometry
International Corp., which Appellants submit is a subsidiary of EagleView
Technology Corporation. App. Br. 1.
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rejection, we have jurisdiction pursuant to 35 U.S.C. §§ 6(b) and 134(a)
because the claims have been twice presented and rejected. See Ex parte
Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994) (precedential).
We reverse and enter a new ground of rejection of claims 1–10
and 12–20 under 37 C.F.R. § 41.50(b).
BACKGROUND
Appellants’ disclosed embodiments and claimed invention relate to a
system for detecting a structure’s footprint from oblique imagery (i.e.,
images captured with a camera aimed at an angle that captures both the top
and sides of one or more structures). Spec. ¶¶ 2–10.
Claims 1 and 16, reproduced below, are illustrative of the claimed
subject matter:
1. A computer system, comprising:
at least one processor; and
one or more computer readable medium storing a set of
instructions that when executed by the at least one processor
causes the at least one processor to perform the following steps:
receive one or more electronic files of geo-referenced
oblique images into one or more memory;
analyze the geo-referenced oblique images to:
identify a structure having at least four walls and a
base within the one or more electronic files, the
walls having vertical edges;
determine ground locations for the walls of the
structure;
determine locations and orientations of the vertical
edges of the walls of the structure;
determine relative lengths of the walls of the
structure utilizing the locations and orientations of
edges of the walls of the structure to produce a
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series of horizontal line segments representing the
base of the walls of the structure, the horizontal
line segments having a relative length and an
orientation, at least one of the horizontal line
segments being determined from at least one
horizontal edge extending a length between the
vertical edges, the vertical edges having a top and
a bottom, and the at least one horizontal edge
being above the bottoms of the vertical edges such
that the horizontal edge is above the base of the
structure; and
assemble the horizontal line segments based on
their relative lengths and orientations to form a
footprint of the structure.
App. Br. 41–42 (Claims App’x).
16. A method, comprising the step of:
making a set of instructions on a computer readable medium
accessible to a processor of a computer system, the set of instructions
including instructions for:
identifying horizontal edges and vertical edges of one or more
walls of a structure by analyzing one or more electronic file
stored in one or more non-transitory memory, the electronic file
being indicative of at least one geo-referenced oblique image;
determining three-dimensional information of the horizontal
edges and the vertical edges including position, orientation and
relative lengths of the horizontal edges and the vertical edges
using geo-referenced oblique images showing all the walls of
the structure including one image from each cardinal direction;
determining a ground location for each wall of the structure;
comparing the location and orientation of one or more of the
horizontal edges with the ground locations for the walls of the
structure;
determining the location of one or more of the horizontal edges
as being above the ground locations for the walls of the
structure;
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creating, automatically, horizontal line segments between the
vertical edges at one or more of the ground locations for the
walls of the structure, at least one of the horizontal line
segments based on at least one horizontal edge above the
ground location for the wall represented by the horizontal line
segment; and
forming a footprint of the structure using at least the created
horizontal line segments.
Id. at 45–46.
THE REJECTIONS
R1. Claims 1–10, 12–14, and 16–20 stand rejected under pre-AIA
35 U.S.C. § 103(a) as obvious Zakhor (US 2009/0110267 A1, published
April 30, 2009), Trinh (Hoang-Hon Trinh and Kang-Huyn Jo, Line Segment-
Based Facial Appearance Analysis for Building Image, INTERNATIONAL
FORUM ON STRATEGIC TECHNOLOGY, October 20, 2006, at 332–35), Kim
(US 2008/0208547 A1, published August 28, 2008), and Guo (US
2011/0075882 A1, published March 31, 2011). Non-Final Act. 7–20.
R2. Claim 15 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Zakhor, Trinh, Kim, Guo, and Brown (US 2015/0213590 A1,
filed July 29, 2011, published July 30, 2015). Non-Final Act. 20.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). To the extent Appellants have not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. 37 C.F.R. § 41.37(c)(1)(iv).
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We have considered all of Appellants’ arguments and any evidence
presented. Based upon our review of the record, we find a preponderance of
the evidence supports Appellants’ arguments for the specific reasons
discussed below. We highlight and address specific findings and particular
arguments for emphasis in our analysis below.
Obviousness Rejection R1 of Claims 1–10, 12–14, and 16–20
Appellants argue claims 1–10 and 12–14 together as a group (see
App. Br. 29–39) and argue claims 16–20 together as a group (see id.
at 19–28). Therefore, consistent with the provisions of 37 C.F.R.
§ 41.37(c)(1)(iv), we limit our discussion to independent claims 1 and 16.
Dependent claims 2–10 and 12–14 stand or fall with claim 1; independent
claims 17–19 and dependent claim 20 stand or fall with claim 16.
Claim 1
Claim 1 recites: “analyze the geo-referenced oblique images to: . . .
[1] determine ground locations for the walls of the structure; [2] determine
locations and orientations of the vertical edges of the walls of the structure;
[3] determine relative lengths of the walls of the structure utilizing the
locations and orientations of edges of the walls of the structure . . . .” App.
Br. 41 (Claims App’x) (numbering added) (collectively the “disputed
limitations”).
For the disputed limitations, the Examiner points to Zakhor, Trinh,
and Kim. Non-Final Act. 8–9. Specifically, the Examiner finds that Zakhor
analyzes features in an aerial image and a 3D model to identify potential
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matches between 2D orthogonal corners3 in the aerial image and those in the
3D model. Id. at 8 (citing Zakhor ¶¶ 6, 23, 28); see id. at 7 (finding
Zakhor’s aerial image teaches the claimed “geo-referenced oblique image”).
The Examiner also finds Zakhor teaches detection and use of a “vanishing
point.” Id. at 8 (citing Zakhor, ¶¶ 26, 27, 33). The Examiner states that
“Trinh and Kim supplement vanishing points by . . . using geometric
information of extended lines of the detected edges for feature detection.”
Id. Further, the Examiner finds Trinh discloses “line segments with a
relative length and an orientation” (id. at 8–9 (citing Trinh, Fig. 2)), and the
Examiner finds Kim teaches an edge detection unit, which can detect
“extended straight lines of the edges [that are] perpendicular to the ground of
the 2D photographic image” (id. at 9 (quoting Kim ¶ 41)). The Examiner
further explains:
analyzing the aerial images and 3D model to extract features
(including rooftop and façade of buildings) of the aerial image
& feature determination (i.e. 2DOC) [as disclosed in Zakhor]
refers to “identify a structure, determine ground locations for
walls of the structure, determine locations and orientations of
the vertical edges of the walls of the structure, and determine
relative lengths of the walls of the structure” [as required by
claim 1].
Id. at 3–4 (responding to Appellants’ prior arguments).
Appellants allege that the references fail to teach or suggest the
disputed limitations. App. Br. 31–34. Appellants assert that Zakhor teaches
“the extraction of 2D corners of structures to determine feature pairs and the
determination of vanishing points, all to recover camera pose.” Id. at 33.

3 The 2D orthogonal corners (also called “2DOC”) “correspond to
orthogonal structural corners where two orthogonal building contour lines
intersect.” Zakhor ¶ 23.
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Moreover, Appellants agree that Zakhor matches corners from a 3D model
to corners in an aerial image (id. at 32); however, Appellants argue this fails
to teach or suggest analyzing an aerial image to determine the claimed
ground locations for the walls, the claimed locations and orientations of the
vertical edges of the walls, and the claimed relative lengths of the walls, as
specifically required by the claim. App. Br. 32–33. Further, Appellants
further argue that Trinh and Kim to not cure the deficiencies of Zakhor
because “[s]imply detecting edges or objects does not teach or suggest” the
limitations specifically recited by the claim. Id. at 33.
The Examiner does not directly respond to these arguments, but rather
references the discussion of related limitations of claim 16. Ans. 8–9; see id.
at 5–8 (referenced discussion). In the referenced discussion, the Examiner
notes that Zakhor defines ground-level altitude, extracts the outer contour of
a region, and identifies GPS and compass measurement associated with an
image. Ans. 6 (citing Zakhor ¶¶ 22, 38).4 The Examiner then states, “Based
on the defined ground-level and latitude/longitude in geo-references image,
the ground locations of the walls of the structure can be determined.” Id.
The Examiner explains:
It is common sense to . . . [a person with] skill in the art that
any dimension of the building geometries, for example, length,
width or height of the wall of building, can be determined in a
2D image from a field of view of a 3D building model . . . . The
argued limitations are barely necessary operations for feature
extraction.

4 Rather than responding directly to Appellants’ arguments, this portion of
the Answer largely repeats the findings of the Non-Final Office Action.
Compare Non-Final Act. 17–18 with Ans. 6–8 (repeating Non-Final Office
Action, with brief additional description of Trinh and picture from Kim).
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Id. at 5. The Examiner finds the references, in combination, “teach well-
known the extraction of building geometries (e.g., height) from the
photographic images and 3D model of building.” Id. at 8.
Appellants reply that the “Answer does not provide any reason for
why the Examiner believes the limitations are ‘common sense’ or
necessary.” Reply. Br. 4. Appellants submit that Zakhor uses LIDAR data
to create its 3D model, from which Zakhor extracts edges. Id. at 5 (citing
Zakhor ¶ 38). Appellants submit that the other disclosure of Zakhor relates
to estimating camera pose. Id. at 7; see App. Br. 32 (noting that, in
paragraph 22, Zakhor uses GPS coordinates, focal length, and detected
vanishing points to estimate the camera pose). Further, Appellants argue the
“Answer fails to explain why general extraction of building geometries
using images plus 3D models discloses the particular method described in
the pending claims.” Reply Br. 6.
We are persuaded of Examiner error because the Examiner did not
sufficiently explain how the disputed limitations are rendered obvious by the
cited references. In particular, the Examiner makes findings regarding the
references,5 without tying those findings to the specific requirements of the
disputed limitations, and then concludes that “[i]t would have been obvious
. . . to combine the invention of Zakhor with the teaching of Trinh and Kim

5 We note that some of the Examiner’s factual findings appear to conflate
Zakhor’s aerial image with Zakhor’s 3D model. For example, the Examiner
finds that Zakhor teaches “analyzing the aerial images and 3D model to
extract features (including rooftop and façade of buildings) of the aerial
image” (Non-Final Act. 3); however, the Examiner cites (and we perceive)
no passage of Zakhor that actually teaches extracting a rooftop, façade, or
the like from an aerial image. Rather, Zakhor notes in passing that aerial
images “can cover both rooftop and the façade of buildings” (Zakhor ¶ 18),
and Zakhor extracts building geometries from its 3D model (id. ¶ 38).
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so as to detect or identify any point, edge or façade features of the building
in the image from the street-based images.” Non-Final Act. 10 (emphasis
added); see Ans. 5 (“It is common sense . . . that any dimension of the
building geometries, for example, length, width or height of the wall of [a]
building, can be determined in a 2D image.”), 8 (“[T]he extraction of
building geometries (e.g., height) from the photographic images and 3D
model of building” is “well-known.”). As a result, the Examiner concludes
that identification of building geometries (in general) would have been
obvious, but the Examiner does not explain why the claim limitations (as
specifically recited by claim 1) would have been obvious. This is
insufficient.
Even if we were to agree that a person of ordinary skill in the art
would know how to extract building geometries from a 2D image, the
Examiner fails to explain (and it is not clear from our review) how this
general knowledge (combined with the specific disclosures of Zakhor, Trinh,
and Kim) teaches or suggests “analyz[ing] the geo-referenced oblique
images to: . . . [1] determine ground locations for the walls of the structure;
[2] determine locations and orientations of the vertical edges of the walls of
the structure; [3] determine relative lengths of the walls of the structure
utilizing the locations and orientations of edges of the walls of the structure,”
as specifically required by claim 1. App. Br. 41 (Claims App’x). The
Examiner cites Trinh and Kim for the identified general knowledge—Trinh
calculates vanishing points to measure building geometries generally (Trinh,
p. 332), and Trinh and Kim both perform edge detection on a photographic
image (id.; Kim ¶ 41). As for Zakhor, the Examiner cites (and we perceive)
no disclosure in Zakhor of using the aerial image to determine any building
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geometries; rather, Zakhor uses a 3D model6 to determine or represent
building geometries. Zakhor ¶¶ 37, 38 (“[A] building’s structural edge is
extracted from a 3D model.”); see id. at Abstract, ¶ 6 (using aerial image to
map texture onto existing 3D model). Zakhor does make other
determinations from the aerial image—it determines 2D orthogonal corners
in the aerial image to create possible correlations between the aerial image
and the 3D model (id. ¶¶ 23, 28, 38), and it uses an aerial image to determine
a camera’s position and orientation using vanishing points (id. ¶¶ 6, 22, 26–
28, 33). The Examiner fails to explain how these disclosures, alone or in
combination, teach or suggest the specific requirements of the disputed
limitations.
In short, missing from the Non-Final Action and the Answer is a
sufficient explanation for why a person of skill in the art would have found
the disputed limitations, as specifically required by claim 1, to be obvious.
Whether it would be possible for the ordinary artisan to determine building
geometries, the Examiner has not shown that it would be obvious for an
ordinary artisan to do as the claim requires. Without this necessary
rationale, the Final Action does not establish a prima facie case of
obviousness of the claimed invention. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (requiring a “rational underpinning to support the legal
conclusion of obviousness”), cited with approval in KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007).

6 Zakhor states once, in passing, that 3D models “are generated from stereo
aerial photographs or range sensors such as LIDARS” (id. ¶ 4), but the
remainder of Zakhor’s disclosure refers to a 3D model created by LIDAR
data (e.g., id. ¶¶ 18, 20).
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Therefore, based upon the findings above, on this record, we are
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 1.
Accordingly, we do not sustain the Examiner’s obviousness rejection of
independent claim 1 (and its respective dependent claims).
Claim 16
Claim 16 recites “determining three-dimensional information of the
horizontal edges and the vertical edges” of walls of a structure “using geo-
referenced oblique images showing all the walls of the structure including
one image from each cardinal direction.” App. Br. 45–46 (Claims App’x).
The Examiner finds Zakhor teaches “determining three-dimensional
information . . . using geo-referenced oblique images,” but the Examiner
does not address the claim’s requirement that the geo-referenced oblique
images include one image from each cardinal direction. Non-Final Act. 16
(emphasis omitted). In the Appeal Brief, Appellants allege the rejection is in
error because the Examiner fails to show how the references teach or suggest
that the claimed geo-referenced oblique images show all walls of the
structure including one image from each cardinal direction. App. Br. 24–25.
The Examiner does not respond to this argument in the Examiner’s Answer.
See generally Ans. In their Reply Brief, Appellants argue this limitation is
not disclosed, and Appellants further note that “the Examiner makes no
reference to the limitation at all.” Reply Br. 3–4.
We are persuaded of Examiner error. Neither the Non-Final Office
Action nor the Answer provide any findings or explanation regarding this
claim limitation. Moreover, we see nothing in the cited portions of Zakhor
that clearly teaches or suggests this claim language. Accordingly, on this
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record, we are persuaded of error in the Examiner’s reliance on the cited
prior art combination to teach or suggest this limitation of claim 16, such
that we find error in the Examiner’s resulting legal conclusion of
obviousness.
Therefore, we do not sustain the Examiner’s obviousness rejection of
independent claim 16, or independent claims 17–19, which recite the
disputed limitation in commensurate form. For the same reasons, we also
reverse the rejection of dependent claim 20, which depends from
independent claim 19.
Obviousness Rejection R2 of Claim 15
The Examiner rejects claim 15 over a combination of Zakhor, Trinh,
Kim, Guo, and Brown. Non-Final Act. 20. In light of our reversal of the
rejection of independent claim 1, supra, we also reverse the obviousness
rejection of claim 15, which depends from claim 1. On this record, the
Examiner has not shown how the additionally cited reference, Brown,
overcomes the aforementioned deficiencies with the combination of Zakhor,
Trinh, Kim, and Guo, as discussed above regarding claim 1.
Appellants’ Other Arguments
Because these determinations resolve the § 103 rejection for all
pending claims, we need not address Appellants’ other arguments regarding
Examiner error. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423
(Fed. Cir. 1984) (explaining that an administrative agency may render a
decision based on “a single dispositive issue”).
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NEW GROUND OF REJECTION
35 U.S.C. § 101
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“‘Laws of nature, natural phenomena, and abstract ideas are not
patentable.’” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)). To determine whether a claim falls within one of these
excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is “directed to one
of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then
examine “the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S.
at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 78, 79 (2012)). That is, we examine the claims for an “inventive
concept,” “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18 (alteration
in original) (quoting Mayo, 566 U.S. at 72–73).
The Patent Office recently issued guidance regarding this framework.
See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under the Revised
Guidance, to decide whether a claim is “directed to” an abstract idea, we
evaluate whether the claim (1) recites subject matter falling within an
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abstract idea grouping listed in the Revised Guidance and (2) fails to
integrate the recited abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an abstract idea,
as noted above, we then determine whether the claim recites an inventive
concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry.” Revised Guidance, 84 Fed. Reg. at 56.
The Judicial Exception—Abstract Idea
Claim 1 recites “computer readable medium storing a set of
instructions” and a “processor” that executes the instructions to receive “one
or more electronic files of geo-referenced oblique images” into “memory”
and to:
analyze the geo-referenced oblique images to:
identify a structure having at least four walls and a base within
the one or more electronic files, the walls having vertical edges;
determine ground locations for the walls of the structure;
determine locations and orientations of the vertical edges of the
walls of the structure;
determine relative lengths of the walls of the structure utilizing
the locations and orientations of edges of the walls of the
structure to produce a series of horizontal line segments
representing the base of the walls of the structure, the horizontal
line segments having a relative length and an orientation, at
least one of the horizontal line segments being determined from
at least one horizontal edge extending a length between the
vertical edges, the vertical edges having a top and a bottom, and
the at least one horizontal edge being above the bottoms of the
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vertical edges such that the horizontal edge is above the base of
the structure; and
assemble the horizontal line segments based on their relative
lengths and orientations to form a footprint of the structure.
App. Br. 41–42.
These limitations, under their broadest reasonable interpretation,
cover steps that, but for the recitation of generic computer components,
could be performed in the mind. For example, analyzing geo-referenced
oblique images to identify a structure, to determine ground locations for the
walls of the structure, to determine locations and orientations of edges, and
to determine relative lengths of walls can all be performed in a person’s
mind; further, a person, with pencil and paper, can assemble line segments to
form a footprint of the structure. Indeed, the Specification indicates that the
claimed process automates a process that is otherwise done by people using
their mind and pencil and paper. E.g., Spec. ¶¶ 61 (noting “an operator may
manually provide” data regarding the edges), 84 (“[I]n addition to providing
a means for a fully automated determination of footprint 102 of structure
106, methods described herein may provide assistance for manual generation
of footprint 102 of structure 106.”); see also Zakhor ¶ 4 (referencing “a
human operator visually analyzing the features”); US 2012/0101783 A1
(Stephens et al.) ¶¶ 8–9 (noting “people have used geo-referenced oblique
images to measure objects and structures within the images as well as to be
able to determine geographic locations of points within the image”)
(incorporated by reference by Spec. ¶ 45). And the Federal Circuit
continues to “treat[ ] analyzing information by steps people go through in
their minds, . . . without more, as essentially mental processes within the
abstract-idea category.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1146–47 (Fed. Cir. 2016) (quoting Elec. Power, 830 F.3d at 1354).
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In addition, the claimed limitations involve gathering (i.e.,
“receiv[ing] one or more electronic files . . .”) and analyzing data. When
claimed in a manner similar to the claims here, gathering and analyzing
information using conventional techniques has been determined to be an
abstract idea. See Univ. of Fla. Research Found., Inc. v. General Elec. Co.,
916 F.3d 1363, 1367 (Fed. Cir. 2019) (“This is a quintessential ‘do it on a
computer’ patent . . . . We have held such claims are directed to abstract
ideas.”) (citing Intellectual Ventures I LLC v. Capital One Fin. Corp., 850
F.3d 1332, 1340 (Fed. Cir. 2017); Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353–54 (Fed. Cir. 2016)).
Accordingly, we conclude the claim recites concepts performed in the
human mind and, thus, an abstract idea. Revised Guidance, 84 Fed. Reg.
at 52, 53 (listing “[m]ental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion)” as one of
the “enumerated groupings of abstract ideas”).
Integration of the Judicial Exception into a Practical Application
If a claim recites a judicial exception, we determine whether the
recited judicial exception is integrated into a practical application of that
exception by: (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. If the
recited judicial exception is integrated into a practical application, the claim
is not directed to the judicial exception.
Here, claim 1 recites the additional elements of “a processor,” “one or
more computer readable medium,” “one or more electronic files,” and “one
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or more memory.” Appeal Br. 41–42 (Claims App’x). Considering claim 1
as a whole, the additional elements do not apply or use the abstract idea in a
meaningful way such that the claim as a whole is more than a drafting effort
designed to monopolize the exception. The Supreme Court guides that the
“prohibition against patenting abstract ideas ‘cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment’ or [by] adding ‘insignificant postsolution activity.’” Bilski,
561 U.S. at 610–11 (quoting Diamond v. Diehr, 450 U.S. 175, 191–92
(1981)).
The Specification describes each of these elements as generic
components. For example, the Specification briefly refers to a processor as
being a general purpose computing device. See Spec. ¶¶ 30, 85. Moreover,
the Specification indicates that the computer readable medium may be a CD-
ROM, hard drive, or computer memory. Id. ¶¶ 47, 85. Finally, the
Specification states that the “electronic files can be any suitable format, such
as JPEG, BMP, TIFF or the like.” Id. ¶ 41. The Specification does not
address how the electronic file(s) are received into memory, indicating that
the function is a generic function of a computer.
We find the additional limitation(s) do not integrate the judicial
exception into a practical application. More particularly, the claims do not
recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state
(see MPEP § 2106.05(c)); or (iv) any other meaningful limitation
(see MPEP § 2106.05(e)). See 84 Fed. Reg. at 55.
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Accordingly, even in combination with all the other recited elements,
the addition of “a processor,” “one or more computer readable medium,”
“one or more electronic files,” and “one or more memory” does not integrate
the abstract idea into a practical application because it does not impose any
meaningful limits on practicing the abstract idea. For these reasons, we
determine that claim 1 does not integrate the recited abstract idea into a
practical application.
Inventive Concept
Because we determine that claim 1 is “directed to” an abstract idea,
we consider whether an additional element (or combination of elements)
adds a limitation that is not well-understood, routine, conventional
(“WURC”) activity in the field or whether the additional elements simply
append WURC activities previously known to the industry, specified at a
high level of generality, to the judicial exception. Revised Guidance, 84
Fed. Reg. at 23. Whether the additional elements (“a processor,” “one or
more computer readable medium,” “one or more electronic files,” and “one
or more memory”) are WURC activity is a question of fact. See Berkheimer
v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (“Whether something is
well-understood, routine, and conventional to a skilled artisan . . . is a factual
determination.”).
On the record before us, we find that the claims on appeal do not add
a specific limitation beyond the judicial exception that is not “well-
understood, routine, and conventional” in the field (see MPEP
§ 2106.05(d)). As discussed above, Appellants’ Specification demonstrates
the WURC nature of the additional limitations because it indicates they may
be implemented with generic devices. Spec. ¶¶ 30–40. In addition, courts
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have recognized that performing a mental process with generic computer
components, in a manner similar to that recited in the claims, is WURC.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.”).
For these reasons, we conclude that claim 1, considered as a whole,
does not include an inventive concept. Accordingly, we reject claim 1 under
35 U.S.C. § 101 as directed to patent ineligible subject matter.
Claims 16–19
We have evaluated the remaining independent claims (i.e., claims 16–
19) using the framework provided above and, similarly, conclude that they
recite patent ineligible subject matter.
The limitations of these claims, under their broadest reasonable
interpretation, cover steps that, but for the recitation of generic computer
components, could be performed in the mind. Each of these claims requires
identifying horizontal edges and vertical edges, determining three-
dimensional information of these edges using geo-reference oblique images
from each cardinal direction, determining a ground location for each wall,
comparing the location and orientation of one or more horizontal edges with
the ground locations for the walls, and determining the location of one or
more edges as being above the ground locations for the walls, all of which
can be performed in a person’s mind; further, a person, with pencil and
paper, can create line segments and form a footprint of the structure.
Accordingly, we conclude these claims recite a concepts performed in the
human mind, and thus, an abstract idea. Revised Guidance, 84 Fed. Reg.
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at 52, 53 (listing “[m]ental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion)” as one of
the “enumerated groupings of abstract ideas”).
Moreover, claims 16–19 recite the additional elements of “a
processor,” “computer readable medium,” “one or more electronic files,”
“non-transitory memory,” and “a computer system.” App. Br. 45–50
(Claims App’x). Considering these claims as a whole, the additional
elements do not apply or use the abstract idea in a meaningful way such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception. For the reasons explained above with claim 1, we determine
that claims 16–19 do not integrate the recited abstract idea into a practical
application.
Finally, on the record before us, we find that these claims do not add a
specific limitation beyond the judicial exception that is not “well-
understood, routine, and conventional” in the field (see MPEP
§ 2106.05(d)). As discussed above, Appellants’ Specification demonstrates
the WURC nature of the additional limitations because it indicates they may
be implemented with generic devices. In addition, as noted above, courts
have recognized that performing a mental process with generic computer
components, in a manner similar to that recited in the claims, is WURC.
For these reasons, we conclude that each of claims 16–19, considered
as a whole, does not include an inventive concept. Accordingly, we reject
claims 16–19 under 35 U.S.C. § 101 as directed to patent ineligible subject
matter.
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Dependent Claims
We have reviewed all of the dependent claims (i.e., claims 2–10, 12–
15, and 20) and find that they similarly recite ineligible subject matter.
These dependent claims are directed to the same abstract idea as their
respective independent claim, and none of these claims recite additional
elements that provide a practical application or add a limitation that is not
well-understood, routine and conventional in the field. See Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d
1343, 1348 (Fed. Cir. 2014) (explicit discussion of individual claims not
necessary when discussed claims are sufficiently representative).
Accordingly, we reject claims 2–10, 12–15, and 20 under 35 U.S.C. § 101 as
directed to patent ineligible subject matter.
DECISION
We reverse the Examiner’s decision rejecting claims 1–10 and 12–20
under 35 U.S.C. § 103(a).
We hereby enter a NEW GROUND OF REJECTION under 35 U.S.C.
§ 101 that claims 1–10 and 12–20 fail to recite patent eligible subject matter.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
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
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to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
REVERSED; 37 C.F.R. § 41.50(b)