Arne K. Lewis et al.

Patent Trials and Appeals Board

Dec 19, 2019

13472121 - (D) (P.T.A.B. Dec. 19, 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.
13/472,121 05/15/2012 Arne K. Lewis 11-0967-US-
NP (24691-513)
2907
60476 7590 12/19/2019
PATENT DOCKET DEPARTMENT
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
HAGOS, EYOB
ART UNIT PAPER NUMBER
2863
NOTIFICATION DATE DELIVERY MODE
12/19/2019 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):
USpatents@armstrongteasdale.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ARNE K. LEWIS, JOSEPH FRANK FLOYD,
BRENT LOUIS HADLEY, STEPHEN PAUL MILLER, and
PHILLIP JON FISHER
____________

Appeal 2018-002017
Application 13/472,121
Technology Center 2800
____________

Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JEFFREY R. SNAY, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3, 4, 6, 8–13, and 15–20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies The Boeing Company as the real party in
interest. Appeal Br. 1.
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BACKGROUND
The subject matter on appeal relates to methods and systems for
assessing allowable damage limits for a structure. Spec. ¶ 1. According to
the Specification, known damage assessment programs involve field
personnel looking up data in structural repair manuals. Id. ¶ 4. The
Specification describes a program to “systematically locate, identify,
quantify and/or assess structure damage.” Id. Claim 1 is illustrative:
1. A computer-implemented method of assessing a
damage of a composite structure by a user interface device, the
method comprising:
retrieving, at the user interface device, a plurality of
models of the composite structure from a compliance
management system;
displaying a first model of the plurality of models on the
user interface device;
receiving a selection of a location of damage on the first
model of the composite structure from the user interface device;
displaying a second model of the plurality of models on
the user interface device, wherein the second model depicts a
portion of the first model including a more detailed view of the
location of damage on the first model;
iteratively receiving selections of locations of damage on
the plurality of models until a specific location of damage on
the composite structure is determined;
receiving a user input that includes a value for at least
one parameter of the damage, thereby defining quantifiable
information for the at least one parameter;
generating at least one question based on the at least one
parameter, wherein the at least one question further defines
aspects of the damage relative to the composite structure;
receiving a response to the at least one question;
performing a structural analysis to determine a damage
allowability, wherein the damage allowability is based on the
value of the at least one parameter and the response to the at
least one question; and
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displaying an output result of the structural analysis from
the user interface device.

Appeal Br. 14 (Claims Appendix). Independent claim 11 recites a system
that includes a computer enabled to perform essentially the same method as
is recited in claim 1. Independent claim 17 recites a method similar to claim
1. Each remaining claim on appeal depends from claim 1, 11, or 17.

REJECTIONS
I. Claims 1, 3, 4, 6, 8–13, and 15–20 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
II. Claims 1, 3, 4, 6, 8–13, 15, and 16 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wilke2 and Kollgaard.3
III. Claims 17–20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Wilke, Kollgaard, and Inoue.4

DISCUSSION
Rejection I: ineligibility under 35 U.S.C. § 101
The Examiner rejects claims 1, 3, 4, 6, 8–13, and 15–20 under 35
U.S.C. § 101 as being directed to a judicial exception—namely, an abstract
idea without significantly more. Final Act. 2. Appellant argues the claims
as a group. See Appeal Br. 5–9; Reply Br. 1–3. In accordance with 37
C.F.R. § 41.37(c)(1)(iv), we select independent claim 1 as representative,
and decide the appeal based on the representative claim alone. Having

2 US 2007/0061109 A1, published March 15, 2007.
3 US 2008/0195403 A1, published August 14, 2008.
4 US 2003/0225790 A1, published December 4, 2003.
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considered the Examiner’s findings and Appellant’s arguments, we are not
persuaded the Examiner reversibly erred in rejecting claim 1 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.
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).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
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(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 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
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 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].”’ Id. (quoting Mayo, 566 U.S. at 77).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. See Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) (“Guidance”), as updated in October 2019. Under Step 1
of the Guidance, we determine whether the claimed subject matter falls
within the four statutory categories: process, machine, manufacture, or
composition of matter. Step 2A of the Guidance is two-pronged, under
which we look to whether the claim recites:
(1) any judicial exception, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then, under Step
2B, look to whether the claim:
adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. See Guidance.
We have considered the Examiner’s findings and the Appellant’s
arguments in light of the controlling case-law and Guidance, and are not
persuaded the Examiner erred in rejecting the claims under 35 U.S.C. § 101.

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Guidance Step 1
There is no dispute that claim 1 is within a statutory category. Claim
1 recites a method.

Guidance Step 2A, Prong 1
Under Step 2A of the Guidance, we first consider whether the
Examiner erred in determining that the claim recites a judicial exception.
The Examiner determined that claim 1 recites an abstract idea. Final Act. 2–
4. For the reasons explained below, we see no error in that determination.
The Guidance identifies mental processes as one of the enumerated
groupings of abstract ideas. Guidance, 84 Fed. Reg. at 52. A claim recites a
mental process when it encompasses acts people can perform using their
minds or pen and paper. See, e.g., CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372–3 (Fed. Cir. 2011) (determining that a claim
whose “steps can be performed in the human mind, or by a human using a
pen and paper” is directed to an unpatentable mental process). This is true
even if the claim recites use of a generic computer component to perform the
process steps. See, e.g., Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that required the
use of a computer and still found that the underlying, patent-ineligible
invention could be performed via pen and paper or in a person’s mind.”); see
also 2019 Eligibility Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under
its broadest reasonable interpretation, covers performance in the mind but
for the recitation of generic computer components, then it is still in the
mental process category unless the claim cannot practically be performed in
the mind.”).
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In this case, claim 1 recites “performing a structural analysis to
determine a damage allowability.” The claim does not require any particular
machine or device in connection with the above-quoted performing step. A
person could perform the step entirely in the mind by mentally comparing
measured damage parameters with allowable damage parameters and
making a determination as to whether the measured damage is allowable.
See, e.g., Spec. ¶¶ 35, 38 (describing a process for performing structural
analysis by comparing measured dimensions of a given damage with
allowable damage limits obtained from a database). Thus, in the context of
claim 1, the step of “performing” can reside solely within a human thought
process. Accordingly, we conclude that claim 1 recites a mental process,
which is identified in the Guidance as an abstract idea.

Guidance Step 2A, Prong 2
Having determined that the claims recite a judicial exception, our
analysis under the Guidance turns to determining whether there are
additional elements that integrate the exception into a practical application.
See MPEP § 2106.05(a)–(c), (e)–(h). The additional elements in claim 1 are:
(1) “retrieving . . . a plurality of models;” (2) “displaying a first model;” (3)
“receiving a selection of a location of damage;” (4) “iteratively receiving
selections of locations of damage;” (5) “receiving a user input that includes a
value;” (6) “generating at least one question;” (7) “receiving a response;”
and (8) “displaying an output result of the structural analysis.”
We determine that claim 1 does not recite additional elements that
integrate the judicial exception into a practical application. The recited
“retrieving,” “receiving,” and “displaying” steps involve data gathering
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recited at a high level of generality. See Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“As many cases
make clear, even if a process of collecting and analyzing information is
‘limited to particular content’ or a particular ‘source,’ that limitation does
not make the collection and analysis other than abstract.” (quoting Elec.
Power Grp., 830 F.3d at 1353, 1355 (citing cases)). In this case, the
foregoing steps, both individually and collectively, merely constitute
identifying a particular location or part of a structure and collecting
quantitative information relating to a given damage at that location, each of
which is to be used in the recited structural analysis. “Generating” a
question relating to the damage can be performed in a person’s mind or with
pen and paper. As such, the generating step also does not “transform the
nature of the claim into a patent-eligible application.” See Alice, 573 U.S. at
217; see also Guidance 84 Fed. Reg. at 55 n.24 (“USPTO guidance uses the
term ‘additional elements’ to refer to claim features, limitations, and/or steps
that are recited in the claim beyond the identified judicial exception.”).
Appellant argues that the claims are not directed to an abstract idea
because the focus of the subject claims is on improving the technology of
electronically quantifying and assessing structural damage. Appeal Br. 5–6
(citing McRo, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1229 (Fed.
Cir. 2016). The claims at issue in McRO were “directed to the creation of
something physical—namely, the display of lip synchronization and facial
expressions of animated characters on screens.” SAP Am., Inc. v. Investpic,
LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (citing McRO, 837 F.3d at
1313). Here, the focus of the claims is not an improvement in the creation of
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something physical but purportedly an improvement in the abstract idea of
comparing structural damage information to existing damage allowance
information. See Spec. ¶ 55 (“The embodiments described herein
systematically locate and identify damage areas and quantify and assess
structural damage present in damage areas.”). Although claim 1 recites
“performing a structural analysis,” Appellant does not explain how that
recitation requires anything more than comparing an observed damage value
with a reference value for compliance determination. Such a comparison of
values can be performed in a person’s mind and, therefore, does not
“transform the nature of the claim into a patent-eligible application.” See
Alice, 573 U.S. at 217; see also Guidance 84 Fed. Reg. at 55 n.24.
Appellant also argues that the present claims recite a technology-
based solution to assessing structural damage and, therefore, transform any
abstract idea into a particular, practical application. Appeal Br. 8. Appellant
further argues that “the pending claims are directed to a specific
implementation of a solution to a problem in the software arts.” Id. at 9.
These arguments are not persuasive of reversible error in the
Examiner’s rejection. Viewed as a whole, claim 1 applies mental processes
to the environment of determining whether a given damage value is within a
recorded damage allowance. “[M]erely limiting the field of use of the
abstract idea to a particular existing technological environment does not
render the claims any less abstract.” Affinity Labs of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016). We are not
persuaded that the claimed method effects an improvement in computer-
technology or any other technology or technical field. See MPEP
§ 2106.05(a).
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Nor does the claimed method apply the judicial exception using any
particular machine. See MPEP § 2106.05(b). Claim 1 recites only a generic
“user interface device” and “compliance management system,” which the
Specification identifies as encompassing a generic central processing unit.
Spec. ¶ 25. Appellant does not purport that the claim adds any other
meaningful (technological) limitation, i.e., limitations beyond linking the use
of the abstract idea to generic technology. See MPEP § 2106.05(c), (e); see
also id. at (f)–(h) (mere instruction to apply a judicial exception (f),
insignificant extra-solution activity (g), and generally indicating a field of
use or technological environment in which to apply a judicial exception (h),
are insufficient to integrate an abstract idea into a practical application).
For the foregoing reasons, we determine that claim 1 does not
integrate the judicial exception into a practical application.

Guidance Step 2B
In Alice step two, we consider the elements of the claim, both
individually and as an ordered combination, to assess whether the additional
elements transform the nature of the claim into patent-eligible subject
matter. Content Extraction & Transmission LLC v. Wells Fargo Bank, 776
F.3d 1343, 1347 (Fed. Cir. 2014). “To save a patent at step two, an
inventive concept must be evident in the claims.” RecogniCorp, LLC v.
Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017). “An inventive concept
that transforms the abstract idea into a patent-eligible invention must be
significantly more than the abstract idea itself, and cannot simply be an
instruction to implement or apply the abstract idea on a computer.” Bascom
Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349
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(Fed. Cir. 2016). According to the Guidance, “simply append[ing] well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality,” is indicated that an
inventive concept is absent. Guidance, 84 Fed. Reg. at 56.
In this context, we also look to see if the additional elements are more
than “well-understood, routine, and conventional” so as to amount to an
inventive concept. Conversely, we consider whether these additional
elements simply append “well-understood, routine, and conventional”
elements, particularly at a high level of generality, to the judicial exception.
Appellant does not point to evidence of record that would tend to
show that the step of “performing a structural analysis” in claim 1 is more
than well-understood, routine, and conventional. To the contrary, the
Specification acknowledges conventional programs for performing structural
analysis through use of personnel inspecting structural repair manuals.
Wilke serves as further evidence that structural damage analysis was well-
known. See, e.g., Wilke ¶¶ 70–75; Fig. 10. The recited steps of receiving
information to be used in the determination, as well as displaying output
results, also are shown to have been known. See id. When considered as an
ordered combination, the steps recited in claim 1 essentially automate a
known manual process of identifying structural damage and assessing its
compliance with existing allowances. See Spec. ¶ 4.
For the foregoing reasons, we determine that the additional elements
recited in claim 1 do not amount to significantly more than the abstract idea
itself.
For the reasons discussed above and by the Examiner, we are not
persuaded of reversible error in the Examiner’s rejection of representative
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claim 1. Accordingly, the rejection of claims 1, 3, 4, 6, 8–13, and 15–20
under 35 U.S.C. § 101 is sustained.

Rejections II and III: obviousness under 35 U.S.C. § 103
The Examiner also rejects claims 1, 3, 4, 6, 8–13, 15, and 16 under 35
U.S.C. § 103(a) as unpatentable over Wilke and Kollgaard (Rejection II),
and claims 17–20 over Wilke, Kollgaard, and Inoue.
Appellant presents the same arguments in connection with both
Rejection I and Rejection II. Appellant argues that the Examiner erred in
finding that Wilke’s disclosure of different displays meets the “plurality of
models” recitation in the claims. Appeal Br. 10–11. Appellant also argues
that Wilke does not teach that the displayed models are “retrieved from a
compliance management system, as claimed. Id.
Relevant to Appellant’s arguments on appeal, the Examiner finds that
Wilke discloses presenting a first display representing a plurality of
locations of a structure type, and in response to user input, presenting a
second display representing a plurality of sub-locations. Final Act. 8. See
also Ans. 11 (“[T]he second model depicts a portion of the first model
including a more detailed view of the location of damage on the first
model.”). Consistent with the Examiner’s findings, Wilke discloses a
damage location module for a particular vehicle which, in use, presents
sequentially more detailed views of a selected region of the vehicle. Wilke ¶
48. Wilke explains, “[t]his process may continue until the damage location
has been specified as precisely as needed”). Id.
Appellant’s argument that Wilke’s depiction of progressively more
detailed views of a structure region does not constitute a plurality of models
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is refuted by the language in the claims. For example, claim 1 specifies that
the recited plurality of models includes a “second model [which] depicts a
portion of the first model including a more detailed view of the location of
damage on the first model.” Thus, the claims call for the same progressively
detailed views as are discussed in Wilke.
Nor are we persuaded that Wilke does not meet the recited retrieval of
models “from a compliance management system.” The Specification
provides that a compliance management system encompasses a generic
central processing unit storing the model information. Spec. ¶ 25. Wilke
likewise implements the disclosed process steps, including retrieval and
display of information, using computer processors. Wilke ¶ 76. Appellant
does not present persuasive evidence or argument to explain why the recited
compliance management system would not encompass a computer processor
having stored model information.
The rejections under 35 U.S.C. § 103(a) are sustained.

CONCLUSION
The Examiner’s decision rejecting claims 1, 3, 4, 6, 8–13, and 15–20
is affirmed.

DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 4, 6, 8–
13, 15–20
101 1, 3, 4, 6, 8–
13, 15–20

1, 3, 4, 6, 8–
13, 15, 16
103(a) Wilke, Kollgaard 1, 3, 4, 6, 8–
13, 15, 16

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17–20 103(a) Wilke, Kollgaard,
Inoue
17–20
Overall
Outcome
1, 3, 4, 6, 8–
13, 15–20

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).

AFFIRMED