Brandt, Gary Edward. et al.

Patent Trials and Appeals Board

May 15, 2020

13415140 - (D) (P.T.A.B. May. 15, 2020)

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.
13/415,140 03/08/2012 Gary Edward Brandt 1970.0015-0001 5047
152 7590 05/15/2020
CHERNOFF, VILHAUER, MCCLUNG & STENZEL, LLP
111 SW Columbia Street
Suite 725
PORTLAND, OR 97201
EXAMINER
ERB, NATHAN
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
05/15/2020 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):
patent.docket@chernofflaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GARY EDWARD BRANDT, GARY ALAN SNYDER, and
ROBERT BRADLEY ASHTON
____________

Appeal 2018-005284
Application 13/415,140
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
AMEE A. SHAH, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b). An Oral hearing was held on May 4, 2020.

SUMMARY OF THE DECISION
We AFFIRM-IN-PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Greenbrier
Management Services, LLC. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to calculating the amount of
car hire owed by a railroad transporter to an owner of transport equipment
(Spec., para 11, Abstract). Claim 1, reproduced below with the italics
added, is representative of the subject matter on appeal.

1. A computing device that automatically applies a plurality of
reclaims to an ongoing movement cycle of a unit of railroad transport
equipment, said computing device comprising:
(a) an input that receives tracking data representing respective
past movements of a plurality of shared said railroad transport
equipment, said tracking data incrementally updated and comprising
numerical codes each respectively associated with said ongoing
movement cycle and representing statistical information about said
ongoing movement cycle;
(b) memory that, at a time before receipt of said numerical
codes, stores said plurality of reclaims for which said ongoing
movement cycle is potentially eligible, each said reclaim having at
least one associated parameter, each said parameter specifying a
respective eligibility condition for an associated said reclaim;
(c) a processor that uses the tracking data to select and apply a first
reclaim from said plurality of reclaims to said ongoing movement
cycle by comparing said numerical codes associated with said ongoing
movement cycle to said at least one associated parameter of said first
reclaim; and
(d) where said processor uses the applied said first reclaim and
said tracking data of a plurality of said respective past movements of
said plurality of shared said railroad equipment to automatically
select a second reclaim, from among a subset of reclaims mutually
exclusive to each other and within said plurality of reclaims, to also
apply to said movement cycle, where said movement cycle is eligible
for each reclaim in said subset, individually, wherein reclaims are
mutually exclusive to each other when selection of any one reclaim in
said subset precludes selection of all others in said subset.

Appeal Br. 24 (Claims Appendix).

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THE REJECTIONS
The following rejections are before us for review:
1. Claims 1–6 and 8–20 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
2. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the Appellant’s prior art admission, Walker (US 2004/0117261 Al,
published June 17, 2004), and Nageli (US 2004/0183673 Al, published
September 23, 2004).

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (Appeal Br. 5–16; Reply Br.
4–10). The Appellant argues further that the claim is “significantly more”
than the alleged abstract idea (Appeal Br. 16–18; Reply Br. 10–12).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 6–9; Ans. 2–14).
We agree with the Examiner. An invention is patent eligible if it
claims a “new and useful process, machine, manufacture, or composition of

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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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. 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, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (internal citation omitted) (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.”).
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application, i.e., 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.” (see Guidance, 84 Fed. Reg.
at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)).
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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 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.
See Guidance.
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.
The Specification at the Abstract states that the invention generally
relates to a system for calculating amounts of a car hire owed. Here, the
Examiner has determined that the claim sets forth “applying reclaims to a
piece of railroad transport equipment” and is a method of organizing human
activities and fundamental economic practice (Final Act. 6). We
substantially agree with the Examiner. We determine that the claim sets
forth the subject matter in italics above which describes the concept of
calculating amounts for a car hire owed by a railroad transporter and is a
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certain method of organizing human activity of a fundamental economic
practice, or a mental process, i.e. a judicial exception.
For example, in Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350 (Fed. Cir. 2016), the court held collecting information, analyzing it,
and displaying results from certain results of the collection and analysis to
be an abstract idea. A system, like the claimed system, “a process that
employs mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible.” See Digitech Image
Techs, LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir.
2014). In Buysafe, Inc. v. Google, Inc. 765 F.3d 1350, 1355 (Fed. Cir.
2014), it was held that claims drawn to creating a contractual relationship are
directed to an abstract idea. In Versata Development Group, Inc. v. SAP
America, Inc., 793 F. 3d 1306, 1333 (Fed. Cir. 2015), it was held that
determining a price, using organizational and product group hierarchies was
held to be an abstract idea. In Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc.. 876 F.3d 1372, 1376 (Fed. Cir. 2017), the local processing of
payments for remotely purchased goods was held to be an abstract concept.
We next determine whether claim 1 recites additional elements to
integrate the judicial exception into a practical application. See Guidance,
84 Fed. Reg. at 54–55. The Revised Guidance references the MANUAL OF
PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Here, the claim does not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular physical transformation. Rather, we determine that nothing in
claim 1 imposes a meaningful limit on the judicial exception, such that the
claims are more than a drafting effort to monopolize the judicial exception.
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For example, in claim 1 the steps of [1] “receiv[ing] tracking data”;
[2] “stor[ing] . . . said plurality of reclaims for which said ongoing
movement cycle is potentially eligible”; [3] “us[ing] the tracking data to
select and apply a first reclaim from said plurality of reclaims to said
ongoing movement cycle”; and [4] “us[ing] the applied said first reclaim and
said tracking data of a plurality of said respective past movements of said
plurality of shared said railroad equipment to automatically select a second
reclaim” are merely steps performed by a generic computer that do not
improve computer functionality. That is, these recited steps [1]–[4] “do not
purport to improve the functioning of the computer itself” but are merely
generic functions performed by a conventional processor. Likewise, these
same steps [1]–[4] listed above do not improve the technology of the
technical field and merely use generic computer components and functions
to perform the steps of the abstract idea. Also, the recited method steps
[1]–[4] above do not require a “particular machine” and can be utilized with
a general purpose computer, and the steps performed are purely
conventional. In this case the general purpose computer is merely an object
on which the method operates in a conventional manner. Further, the claim
as a whole fails to effect any particular transformation of an article to a
different state. The recited steps [1]–[4] fail to provide meaningful
limitations to limit the judicial exception and rather are mere instructions to
apply the method to a generic computer.
Considering the elements of the claim both individually and as “an
ordered combination,” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
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computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application as set forth in the
Revised Guidance which references the MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
Considering the limitations of claim 1 both individually and as an ordered
combination fails to add subject matter beyond the judicial exception that is
not well-understood, routine, and conventional in the field. Rather the claim
uses well-understood, routine, and conventional activities previously known
in the art and they are recited at a high level of generality. The Specification
at paragraph 22 for example describes using conventional computer
components such as existing databases/computer systems in a conventional
manner. The claim specifically includes recitations for a processor to
implement the method, but the processor and computer components are used
in a manner that is well-understood, routine, and conventional in the field.
Here, the claimed generic computer components which are used to
implement the claimed method are well understood, routine, or conventional
in the field. Here, the claim has not been shown to be “significantly more”
than the abstract idea.
The Appellant, in the Appeal Brief at pages 11–14, has also cited
to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show
that the claim is not abstract. But the claims in that case were not similar in
scope to those here and were, in contrast, directed to a self-referential data
table.
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The Appellant cites to DDR Holdings, LLC v. Hotels, L.P., 773 F. 3d
1245 (Fed. Cir. 2014) and argues that the claim is “rooted in computer
technology” (Appeal Br. 16, 17). We disagree as the Appellant has not
shown how the claimed subject matter is rooted in technology given that the
Specification describes only the use of generic computer equipment used in
a routine, conventional, and generic manner.
The Appellant, at pages 16–18 of the Appeal Brief, has also cited to
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016), but the claims in that case are distinguished from this case in being
directed to rules for lip sync and facial expression animation.
The Declaration of Gary Snyder and Robert Bradley Ashton has been
fully considered but is not persuasive to show that the claim is not directed
to an abstract idea without substantially more.
For these above reasons the rejection of claim 1 is sustained. The
Appellant has provided the same arguments for independent claims 7 and 8
which are drawn to similar subject matter, and the rejection of these claims
is sustained for the same reasons given above.
With regard to dependent claim 3, the Appellant argues that the
limitation that “said numerical codes represent automatically inferred
information about said ongoing movement cycle, and at least one of said
first reclaim and said second reclaim are selected based on said
automatically inferred information” is directed to an improvement in
computer technology (Appeal Br. 18, 19). The Appellant provides similar
arguments for dependent claims 4, 5, 12, and 13, stating that they also
address improvements to car hire calculation systems. We disagree because
these claims are all directed to conventional computer operations of
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processing information. For example, the limitation above argued for
claim 3 is directed to generic recognition and selection functions which are
commonly used in computer systems. For these reasons, the rejection of
claims 3–5, 12, and 13 is sustained.
The Appellant argues that in claim 6, the limitation that “the selected
fixed time reclaim is selectively and automatically applied by said processor
using a logical grouping of a plurality of equipment movement events and
non-movement events” is also an improvement in computer technology
(Appeal Br. 19). The Appellant provides similar arguments for the
dependent claim limitations “said processor sorts said plurality of fixed time
reclaims into a precedence hierarchy and uses said hierarchy to
automatically select a said fixed time reclaim” (claim 9); “said precedence
hierarchy includes a first level hierarchy comprising a first plurality of
prioritized categories of reclaims, and a sub-level hierarchy within each first
level hierarchy comprising a second plurality of prioritized categories and
where said processor automatically selects a said fixed time reclaim by
navigating the precedence hierarchy to identify the highest priority fixed
time reclaim in said precedence hierarchy” (dependent claim 10); “said
logical grouping of a plurality of equipment movement events and non-
movement events extends over an associated time interval, and where said
processor iteratively applies sequential said fixed time reclaims until no time
is left in said interval” (claim 11); and “said precedence hierarchy includes a
first level hierarchy comprising a first plurality of prioritized categories of
reclaims, and where said processor automatically selects a said up to reclaim
by navigating the precedence hierarchy to identify the highest priority up to
reclaim in said precedence hierarchy” (claim 14). We disagree with the
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Appellant as the above argued limitations are each drawn to conventional
computer processing functions such as selecting and sorting, and are not
“significantly more” than the abstract concept when considered in the
context of each respective claim. For these reasons, the rejection of claims
6, 9, 10, 11, and 14 is not sustained as well. The Appellant has provided the
same arguments for the remaining claims drawn to similar subject matter
and the rejection of these claims is sustained as well.

Rejection under 35 U.S.C. § 103
The Appellant argues that the rejection of claim 7 is improper because
the rejection fails show the claim limitation of using
“tracking data representing incrementally updated respective past
movements of shared said railroad transport equipment, to apply an
automatically-selected first reclaim to a movement cycle” and “said
tracking data of a plurality of said respective past movements of said
plurality of shared said railroad equipment, to automatically select a
second reclaim”

(Appeal Br. 21, 22).
In contrast, the Examiner has determined that the cited claim
limitation is disclosed by the Appellant’s Specification at paragraphs 2–11,
50, and 51 (Ans. 15–17).
We agree with the Appellant. Here, the citations to the Specification
at paragraphs 2–11, 50, and 51 fail to disclose the argued claim limitation.
For example, although paragraphs 50 and 51 do give background on
reclaims and their computation, the use of the specifically recited tracking
data of incrementally updated respective past movements of shared said
railroad transport equipment for computing a first reclaim; and tracking
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data of a plurality of said respective past movements of said plurality of
shared said railroad equipment to calculate a second reclaim are not
disclosed.
For these above reasons, the rejection of claim 7 is not sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1–6 and 8–20 under 35 U.S.C. § 101 as listed in the
Rejections section above.
We conclude that Appellant has shown that the Examiner erred in
rejecting claim 7 under 35 U.S.C. § 103 as listed in the Rejections section
above.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 8–20 101 Eligibility 1–6, 8–20
7 103 Walker and Nageli 7
Overall
Outcome
1–6, 8–20 7

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART