Dong, Wei Shan. et al.

Patent Trials and Appeals Board

Nov 1, 2019

14450712 - (D) (P.T.A.B. Nov. 1, 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.
14/450,712 08/04/2014 Wei Shan Dong YOR920140191US1 1016
48915 7590 11/01/2019
CANTOR COLBURN LLP-IBM YORKTOWN
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
LAMARDO, VIKER ALEJANDRO
ART UNIT PAPER NUMBER
2124
NOTIFICATION DATE DELIVERY MODE
11/01/2019 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WEI SHAN DONG, ARUN HAMPAPUR,
HONGFEI LI, LI LI, XUAN LIU, CHUN YANG MA, and
SONGHUA XING
____________________

Appeal 2019-000495
Application 14/450,712
Technology Center 2100
____________________

Before ALLEN R. MACDONALD, MICHAEL J. ENGLE, and
IFTIKHAR AHMED, Administrative Patent Judges.

AHMED, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–20, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Technology
The application relates generally to performing spatio-temporal
prediction by generating new features for each of at least two multi-scale

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, the real party in interest is International
Business Machines Corp. App. Br. 1.
Appeal 2019-000495
Application 14/450,712

2

spatial datasets, the new features being based on features of each of the
multi-scale spatial datasets and spatial relationships between and within the
multi-scale spatial datasets. Spec. Abstract. The process then further
selects, using a processor, features of interest from among the new features,
trains a predictive model based on the features of interest, and predicts an
event based on the predictive model. Id.
Illustrative Claim
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized:
1. A method of performing spatio-temporal prediction, the
method comprising:
obtaining, based on communication with one or more
sources, multi-scale spatial datasets, each of the multi-scale
spatial datasets providing a type of information at a
corresponding granularity, at least two of the multi-scale spatial
datasets providing at least two different types of information at
different corresponding granularities, wherein each granularity
defines a minimum area to which the corresponding multi-scale
spatial dataset corresponds;
generating, using a processor, spatial relationships both
between the multi-scale spatial datasets at the different
corresponding granularities and within the multi-scale spatial
datasets;
generating, using the processor, features from each of the
multi-scale spatial datasets, wherein each feature of each of the
multi-scale spatial datasets is a unit of the multi-scale spatial
dataset;
generating, using the processor, new features for each of
the multi-scale spatial datasets, the new features being based on
the features of each of the multi-scale spatial datasets and the
spatial relationships between and within the multi-scale spatial
datasets;
Appeal 2019-000495
Application 14/450,712

3

selecting, using the processor, features of interest from
among the new features;
training a predictive model based on the features of
interest; and
predicting an event based on the predictive model.
REJECTION2
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
ineligible subject matter without significantly more. Final Act. 2–6.
ISSUE
Did the Examiner err in concluding that claim 1 was directed to
ineligible subject matter without significantly more under § 101?
ANALYSIS
Principles of Law
Section 101 defines patentable subject matter: “Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. The Supreme Court, however, has “long held that
this provision contains an important implicit exception” that “[l]aws of
nature, natural phenomena, and abstract ideas are not patentable.” Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted). “Eligibility under 35 U.S.C. § 101 is a question of law,

2 Separate patentability is not argued for claims 2–20. Therefore, we select
independent claim 1 as representative. Except for our ultimate decision, we
do not discuss the § 101 rejection of claims 2–20 further herein.
Appeal 2019-000495
Application 14/450,712

4

based on underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1166 (Fed. Cir. 2018). To determine patentable subject matter, the Supreme
Court has set forth a two part test.
“First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014).
“The inquiry often is whether the claims are directed to ‘a specific means or
method’ for improving technology or whether they are simply directed to an
abstract end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017). A court must be cognizant that “all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas” (Mayo, 566 U.S. at 71), and “describing the
claims at . . . a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Instead, “the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter.” Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
If the claims are directed to an abstract idea or other ineligible
concept, then we continue to the second step and “consider 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, 566 U.S.
at 79, 78). The Supreme Court has “described step two of this analysis as a
search for an ‘inventive concept’—i.e., an element or combination of
elements that is sufficient to ensure that the patent in practice amounts to
Appeal 2019-000495
Application 14/450,712

5

significantly more than a patent upon the ineligible concept itself.” Id. at
217–18 (quotation omitted).
The U.S. Patent & Trademark Office recently published revised
guidance on the application of § 101. USPTO, 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).
Under that guidance, we look to whether the claim recites
(1) a judicial exception, such as a law of nature or any of the
following groupings of abstract ideas:
(a) mathematical concepts, such as mathematical formulas;
(b) certain methods of organizing human activity, such as a
fundamental economic practice; or
(c) mental processes, such as an observation or evaluation
performed in the human mind;
(2) any additional limitations that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h));
and
(3) any additional limitations beyond the judicial exception that,
alone or in combination, were not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)).
See Guidance 52, 55, 56. Under the Guidance, if the claim does not recite a
judicial exception, then it is eligible under § 101 and no further analysis is
necessary. Id. at 54. Similarly, under the Guidance, “if the claim as a whole
integrates the recited judicial exception into a practical application of that
exception,” then no further analysis is necessary. Id. at 53, 54.
Appeal 2019-000495
Application 14/450,712

6

The Examiner’s Determination and Appellant’s Contentions3
Here, the Examiner concludes that claim 1 is directed to “the abstract
idea of processing gathered data to predict an event.” Ans. 9. The Examiner
further concludes that claim 1 is directed toward
collecting information (step of “obtaining [. . .] multi-scale
spatial datasets [. . .]”), and analyzing it (steps of “generating
spatial relationships both between the multi-scale spatial datasets
at the different corresponding granularities and within the multi-
scale spatial datasets,” “generating features from each of the
multi-scale spatial datasets [. . .],” “generating new features for
each of the multi-scale spatial datasets [. . .],” “selecting features
of interest from among the new features,” “training a predictive
model based on the features of interest,” and “predicting an event
based on the predictive model”).
Id. (emphasis added). The Examiner determines that “the claim is
essentially directed to collection of data, analysis of said data by generating
relationships, features, selecting features used to train a model, training the
model, and predicting using the model.” Id. The Examiner therefore
concludes that “[t]he concept described in claims [1], 10, and 19 is not
meaningfully different than those concepts relating to organizing or
analyzing information in a way that can be performed mentally or is
analogous to human mental work found by the courts to be abstract ideas.”
Final Act. 3 (emphasis added).
The Examiner further determines “that the claims are not directed to a
specific improvement to the way computers operate” or “to a non-
conventional and non-generic arrangement of additional elements, and the

3 The contentions we discuss herein are determinative as to the § 101
rejection on appeal. Therefore, we do not discuss Appellant’s other § 101
contentions herein.
Appeal 2019-000495
Application 14/450,712

7

application does not describes how its particular arrangement of elements is
a technical improvement over prior art ways.” Ans. 10. Specifically, the
Examiner determines that although “[c]laims 1, 10, and 19 do appear to
recite additional elements” such as “a processor,” “an input interface,” and
“a non-transitory computer program medium comprising instructions,” those
additional limitations “are [also] directed towards the abstract idea,” similar
to the patents in Electric Power Group. Id. at 9. The Examiner finds that
although the claims recite a computer-implemented method or system, the
invention claimed “is merely a generic computer implementation that does
not amount to significantly more.” Id.
Appellant argues that “[t]he claimed invention performs spatio-
temporal prediction in a way that accounts for spatial relationships between
datasets available at different scales.” App. Br. 5 (citing Spec. ¶ 14).
According to Appellant, “[w]hen data (e.g., population, crime records) is
available at different scales (e.g., street level, city level), prior methods
failed to consider spatially sensitive factors.” Id. Appellant contends that
the claimed invention improves event predictions by generating new features
based on “spatial relationships between and within the multi-scale spatial
datasets.” Id. at 5–6 (citing Spec. ¶ 16). Therefore, Appellant argues,
claim 1 is directed to a method that improves the relevant technology of
spatio-temporal prediction, and is patent eligible. Id. at 6 (citing Enfish, 822
F.3d at 1336).
Our Analysis
We are persuaded by Appellant’s arguments that the Examiner has not
satisfied the proper burden for making a prima facie case for patent
ineligibility under 35 U.S.C. § 101.
Appeal 2019-000495
Application 14/450,712

8

A) USPTO Step 2A, Prong 1
Claim 1 recites, in part, (A) “obtaining . . . multi-scale spatial
datasets”; (B) “generating . . . spatial relationships both between the multi-
scale spatial datasets at the different corresponding granularities and within
the multi-scale spatial datasets”; (C) “generating . . . features from each of
the multi-scale spatial datasets”; (D) “generating . . . new features for each
of the multi-scale spatial datasets, the new features being based on the
features of each of the multi-scale spatial datasets and the spatial
relationships between and within the multi-scale spatial datasets”; and
(E) “selecting . . . features of interest from among the new features.” App.
Br. Appx. 2. Additionally, claim 1 recites the steps of (F) “training a
predictive model based on the features of interest” and (G) “predicting an
event based on the predictive model.” Id.
The Examiner concludes that claim 1 is directed to the abstract idea of
“processing gathered data to predict an event,” which is similar to
“collecting information, analyzing it, and displaying certain results of the
collection and analysis.” Ans. 9 (citing Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016)); Final Act. 3. The Examiner broadly
characterizes the step of obtaining datasets as “collection of data,” and the
remaining steps recited in claim 1 as “analysis of said data by generating
relationships, features, selecting features used to train a model, training the
model, and predicting using the model,” finding that analysis “is similar to
other ideas found to be abstract by various courts.” Ans. 9 (citing Elec.
Power Grp., 830 F.3d 1350); Final Act. 3. The Examiner therefore finds
that claim 1 recites a process “that can be performed mentally or is
analogous to human mental work.” Final Act. 3 (emphasis added).
Appeal 2019-000495
Application 14/450,712

9

As relevant to prong 1 of step 2A of the Guidance, Appellant argues
that “the Examiner does not provide sufficient analysis with respect to the
first step in the Alice test to establish that the claims are directed to patent
ineligible subject matter,” and that the Examiner’s description of the claims
as collecting information and analyzing it is “at such a high level of
abstraction and untethered from the language of the claims [that it] all but
ensures that the exceptions to § 101 swallow the rule.” App. Br. 6–7
(quoting Enfish, 822 F.3d at 1337).
We agree with the Examiner that claim 1 recites a mental process
because the steps (A) through (E) listed above are recited at a high level of
generality such that they could practically be performed in the human mind
or by a human with a pen and paper. See Elec. Power Grp., 830 F.3d at
1354 (“we have treated analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category”). Step (A), which
requires obtaining multi-scale spatial datasets, is merely a data-gathering
step, which cannot alone confer patentability. See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011). Steps (B)
through (E), which recite generating relationships between the various
datasets and features, are steps that can be performed with a pen and paper.
See id. (reasoning that when a person may implement claimed steps by
simply writing down the claimed data elements, those steps can all be
performed in the human mind); see also Univ. of Utah Research Found. v.
Ambry Genetics Corp., 774 F.3d 755, 763 (Fed. Cir. 2014) (finding claims to
comparing BRCA sequences, where such comparison can practically be
performed in the human mind, to be directed to an abstract idea); Guidance
Appeal 2019-000495
Application 14/450,712

10

52 & n.14 (listing cases). Therefore, on the record before us, we determine
that the Examiner’s articulated reasoning is sufficient on USPTO Step 2A,
Prong 1, and that claim 1 recites a mental process, which is an abstract idea.
B) USPTO Step 2A, Prong 2
Although we agree with the Examiner that claim 1 recites the mental
process of processing gathered data, the Examiner has not shown that the
claim, as a whole, fails to “integrate[] the recited judicial exception into a
practical application of the exception.” Guidance 54 (emphasis added). Put
another way, the Examiner has not sufficiently addressed whether the claim
does “apply, rely on, or use 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.
(emphasis added). Further, the analysis under prong 2 considers the claim
as a whole, i.e., “the limitations containing the judicial exception as well as
the additional elements in the claim besides the judicial exception need to be
evaluated together to determine whether the claim integrates the judicial
exception into a practical application.” October 2019 Patent Eligibility
Guidance Update, at 12, available at http://www.uspto.gov/PatentEligibility.
Here, Appellant argues that “[s]patio-temporal prediction of an event
is a known technological field,” and when “new features are generated based
on ‘spatial relationships between and within the multi-scale spatial datasets,’
as recited by [c]laim 1,” “[t]he method of obtaining event predictions is
improved.” App. Br. 5 (citing Spec. ¶¶ 14, 16). “The generation of these
spatial relationships ‘both between the multi-scale spatial datasets at the
different corresponding granularities and within the multi-scale spatial
Appeal 2019-000495
Application 14/450,712

11

datasets,’” Appellant argues, “is a key improvement in event prediction.”
Id. at 6 (citing Spec. ¶ 16) (emphasis added). Appellant points to the
Specification as describing the resulting benefits over existing technology,
which, Appellant argues “failed to consider spatially sensitive factors” when
data was available at different granularities, e.g., population or crime records
for a city, available at different scales, such as the street level and the city
level. Id. at 5 (citing Spec. ¶ 14).
We are persuaded that the Examiner has erred. In the context of
revised Step 2A, claim limitations “that reflect an improvement in the
functioning of a computer, or an improvement to other technology or
technical field” are indicative of a recited judicial exception being integrated
into a practical application. Guidance 55 (citing DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)); see also MPEP
§ 2106.05(a). A limitation that “applies or uses the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment” similarly integrates the
exception into a practical application. Guidance 55 (citing Diamond v.
Diehr, 450 U.S. 175, 184 (1981)); see also MPEP § 2106.05(e).
Here, claim 1 is specifically directed to generating new features based
on spatial relationships between diverse datasets and using those newly
available features to train a predictive model that can be used to predict an
event. The Specification explains how the claimed use of these new
features, which were unavailable for use in prior art systems, results in an
improvement when utilized in training a predictive model. Figure 2 from the
Specification is reproduced below.
Appeal 2019-000495
Application 14/450,712

12

Figure 2, above, is a flow diagram of performing spatio-temporal prediction
according to the claimed invention. Spec. ¶ 16. With reference to Figure 2,
the Specification explains:
The feature generation at block 210 in the known prediction
system[s] referred to features at the same scale. That is, as noted
above, datasets at different scales could not be used together
unless one dataset was mapped into the scale of the other. Thus,
once a scale was selected for the prediction result, features from
datasets that were only available at a scale other than the selected
scale could not be used in training the model (block 220) in the
known prior prediction systems. The features refer to elements
of a dataset that are factors in the prediction. For example, when
the prediction is a prediction of the probability of crime and
weather is one of the available datasets, temperature may be a
feature (i.e., increased crime may be related to temperatures over
90 ° Fahrenheit (°F), for example).
. . .
Appeal 2019-000495
Application 14/450,712

13

Generating new features based on the spatial relationship
matrices, at block 250, facilitates selecting features in
consideration of spatial sensitivity at block 260. These so-called
spatially sensitive features . . . are provided to the model training
process at block 220.
Id. ¶ 16, 17 (emphasis added). The Specification further states:
At block 210, features are generated from the spatio-temporal
datasets, the features are used to train a model at block 220, and
the model is reapplied at block 230 based on specified prediction
times at block 270 to output the prediction result.
Id. ¶ 16 (emphasis added).
The method recited in claim 1 is aimed at “predicting an event based
on the predictive model.” The Specification lists examples of these events
as pertaining to the likelihood of crime, traffic congestion, and epidemic
spread characterization for a given city. Id. ¶ 2. The claim language and
Specification therefore support that claim 1 is not only limited to the
technical field of spatio-temporal prediction of an event, but also improves
the predictive model used for such predictions. Claim 1 therefore improves
the technical functioning of the computer by reciting a specific technique for
improving the technological process of spatio-temporal prediction. See SRI
Int’l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1303 (Fed. Cir. 2019)
(concluding that a claim that recites using a plurality of network monitors to
analyze specific network traffic data and integrate generated reports from the
monitors to identify hackers and intruders on the network constitutes an
improvement in computer network technology); see also BASCOM Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir.
2016) (holding that even though the claim at issue recites the abstract idea of
Appeal 2019-000495
Application 14/450,712

14

filtering, the claimed invention improves technology when the filtering
limitations are considered in combination with the remaining limitations).
Because claim 1 as a whole integrates the recited abstract idea into a
practical application of that idea under the Guidance, it is not “directed to”
the recited abstract idea and thus qualifies as eligible subject matter under
§ 101. The Examiner thus erred in rejecting independent claim 1;
independent claims 10 and 19, which recite commensurate limitations; and
dependent claims 2–9, 11–18, and 20 as being patent-ineligible for the same
reasons.4
Accordingly, given the record before us, we do not sustain the
Examiner’s rejection of claims 1–20 under § 101.

4 We note that claim 20, which depends from claim 19, recites “[t]he
computer program product according to claim 19.” Claim 19, however
recites “[a] non-transitory computer program medium.” App Br. 5–6
(emphasis added). For the purposes of this Appeal, we read claim 20 as also
reciting a “computer program medium.”
Appeal 2019-000495
Application 14/450,712

15

DECISION
For the reasons above, we reverse the Examiner’s decision rejecting
claims 1–20.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–20 101 Ineligible subject
matter
1–20
Overall
Outcome
1–20

REVERSED