Ex Parte Boss et al

Patent Trial and Appeal Board

Nov 29, 2017

12715457 (P.T.A.B. Nov. 29, 2017)

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.
12/715,457 03/02/2010 Gregory J. Boss END920090131US1 8797
79980 7590 12/
Keohane & D'Alessandro
1881 Western Avenue Suite 180
Albany, NY 12203
EXAMINER
LOFTIS, JOHNNA RONEE
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
12/01/2017 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):
drubbone @ kdiplaw. com
Docket @ Kdiplaw .com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY J. BOSS, CHRISTOPHER J. DAWSON,
RICK A. HAMILTON II, and BENJAMIN G. MORRIS
Appeal 2016-0052831
Application 12/715,4572
Technology Center 3600
Before JAMES A. WORTH, BRADLEY B. BAYAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 2—6, 9—13, 16—20, 22, and 23. We have
jurisdiction under 35 U.S.C. §§ 134 and 6(b).
We AFFIRM.
1 Our decision refers to the Appellants’ Appeal Brief (“Br.,” filed Sept. 8,
2015) the Examiner’s Final Office Action (“Final Act.,” mailed Mar. 26,
2015) and Answer (“Ans.,” mailed Feb. 12, 2016).
2 According to Appellants, the real party in interest is International Business
Machines Corp. (Appeal Br. 1).
Appeal 2016-005283
Application 12/715,457
Introduction
Appellants’ application relates to “transit systems (e.g., Personal
Rapid Transit (PRT) systems)” and specifically to a method, system, and
computer-readable storage device for “changing/updating priority levels
(e.g., of user and/or vehicles) within a controllable transit system” (Spec. 1
2).
Claims 3, 10, 17, and 22 are the independent claims on appeal. Claim
3, reproduced below, is illustrative of the subject matter on appeal:
3. A method for adjusting a length of a transit time for an
individual traveler within a mass transit system, comprising the
computer-implemented steps of:
computing an initial route for a vehicle within the
controllable transit system, the initial route being based on a
priority level of the vehicle, the priority level being based on a
service class of the vehicle, the vehicle being a small
automatically controlled form of ground-based public
transportation operating on a network of specially-built
guideways that provides on-demand, non-stop transportation to
the individual traveler;
receiving a request to change the priority level;
changing the priority level in response to the request;
determining a set of routing options, the set of routing
options having transit times that are adjusted from an original
transit time of the initial route based on the changing of the
priority level;
selecting an updated route from the set of routing options;
and
changing the initial route based on the selection, wherein
the steps are performed on a suitably-programmed computer.
(Appeal Br., Claims App’x.)
Rejection on Appeal
The Examiner maintains, and Appellants appeal, the following
rejection:
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Application 12/715,457
Claims 2—6, 9—13, 16—20, 22, and 23 stand rejected under 35 U.S.C.
§ 101 as being directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more.
ANALYSIS
Claims 2—6, 9—13, 16—20, 22, and 23
The Court in Alice emphasized the use of a two-step framework for
analysis of patentability under 35 U.S.C. § 101:
First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts. If so, we
then ask, “[wjhat else is there in the claims before us?” To
answer that question, we 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.
See Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289
(2012)).
The Examiner determines that claims 2—6, 9—13, 16—20, 22, and 23
are directed to a method, system, and computer-readable medium for
performing calculations to adjust transit time, which is abstract because it is
a way of organizing information through mathematical correlations. See
Final Act. 3-A (referring to Digitech Image Tech., LLC v. Electronics for
Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014); 2014 Interim Guidance on
Patent Subject Matter Eligibility, 79 Fed. Reg. 74618 (Dec. 16, 2014)
(“Interim Guidance”)). The Examiner finds that the additional limitations do
not add significantly more because there are no improvements to another
technology or technical field, nor is there an improvement to the functioning
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Application 12/715,457
of the computer itself, even if the claims might improve a business process
for calculating times. Id. at 4.
Appellants argue that determining updated route options are not
merely mathematical calculations. Br. 8. Appellants argue that the claimed
invention is instead rooted to a specific structure and to specific machines
within this specific structure and that the claimed invention organizes
physical travel pathways for all travelers in a system. Id. However, the
Supreme Court in Bilski rejected the machine-or-transformation test for
determining abstraction. Bilski v. Kappos, 561 U.S. 593 (2010). As such,
the test is not one of physicality. We agree with the Examiner inasmuch as
the claimed invention is directed to a method of organizing human behavior,
i.e., by changing priority levels for transit, which is an abstract idea. See
Alice Corp. v. CLSBankInt’l, 134 S. Ct. 2347 (2014).
Appellants argue that the Examiner incorrectly relies on Digitech for
the determination that the claimed invention is abstract. Br. 8—9. Appellants
assert that the claimed invention is “not merely drawn to a data structure,
such as the device profiles in Digitech, but can be more closely compared to
Example 4 of the Interim Eligibility Guidance, which is modeled after SiRF
Technology Inc. v. International Trade Commission, 601 F.3d 1319 (Fed.
Cir. 2010).” Id. at 7—8.3 The Federal Circuit has elsewhere explained that
the claims at issue in Digitech were directed to abstract mathematical
formulae or generalized steps that can be performed on any general purpose
3 Appellants appear to be referring to Example 4 of the “Abstract Idea
Examples” (dated Jan. 27, 2015) to the 2014 Interim Guidance on Patent
Subject Matter Eligibility, available at
https://www.uspto.gov/sites/default/files/documents/abstract idea examples
.pdf (hereinafter, “Abstract Idea Examples”).
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Application 12/715,457
computer, in distinguishing those claims. See Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1338—39 (Fed. Cir. 2016); see also Amdocs (Israel)
Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1296, 1300 (Fed. Cir.
2016). We agree with the Examiner that the claimed invention resembles
the claims at issue in Digitech inasmuch as the claims refer to a computing
method, which the Examiner correctly finds is not linked to a particular
computing environment and applies to a general purpose computer. Ans. 5.
Indeed, although the Specification refers to a method of transportation, the
Specification does not refer to any particular computing environment.
Further, the Specification does not even provide an algorithm or data
structure to be used. As such, this case differs from Enfish, in which the
court found patentable certain data structures that were directed to advances
in computing technology, and from Amdocs, where the court found that a
distributed architecture was inventive as an ordered combination and
represented an advantage over prior art systems. See Enfish, 822 F.3d at
1338; Amdocs, 841 F.3d at 1302.
For similar reasons, we are not persuaded that the claimed invention
resembles the claim at issue in SiRF Technology, which is discussed in the
Interim Guidance, in a section entitled “Abstract Idea Decisions From the
Federal Circuit Prior to Alice Corp. (2010-2014),” 79 Fed. Reg. at 74360,
and in Example 4 of the “Abstract Idea Examples” Update thereto (dated
Jan. 27, 2015). In particular, the Interim Guidance observes that in SiRF
Technology, the presence of the GPS receiver in the claim places a
meaningful limit on the scope of the claim. Id. As to Example 4 of the
Abstract Idea Examples, which also refers to SiRF, the USPTO noted there
that “the combination of elements [in SiRF] impose[s] meaningful limits in
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Application 12/715,457
that the mathematical operations are applied to improve an existing
technology (global positioning) by improving signal-acquisition sensitivity
of the receiver to extend the usefulness of the technology into weak-signal
environments and providing the location information for display on the
mobile device.” Abstract Idea Examples, 12—13. However, the claimed
invention in the present application, when viewed in light of the
Specification, is not directed to an improvement in computer technology, as
the Examiner correctly finds. See Final Act. 4.
Accordingly, we agree with the Examiner that the claimed invention is
directed to an abstract idea, i.e., organizing activity based on a mathematical
algorithm. For similar reasons, we agree with the Examiner that the
additional limitations, e.g., of “receiving a request,” “changing the priority
level,” “determining,” “reducing a time,” “retum[ing] the set of routing
options to a sender of the request,” “adjusting a length of transit a time,”
“upgrading the priority level,” and “providing a computer infrastructure” for
the instructions, taken individually or as a whole, do not add significantly
more to remove the claimed invention from the realm of the abstract. These
limitations are directed to the same abstract idea of prioritizing travel, and
the Specification does not provide more than general computing structures.
Nor does the Specification explain how this would be a technology advance
in computing. See Final Act. 4. For example, neither the claims nor the
Specification provide the algorithm. As such, the claimed invention remains
at the level of an abstraction, i.e., to prioritize certain vehicles during
transportation, which is an abstract means of organizing human behavior.
For these reasons, we sustain the Examiner’s rejection under § 101 of
claims 2—6, 9-13, 16—20, 22, and 23.
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DECISION
The Examiner’s decision to reject claims 2—6, 9—13, 16—20, 22, and
23 is affirmed.
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).
AFFIRMED
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