Ex Parte Hamilton et al

Patent Trial and Appeal Board

Feb 28, 2019

12336587 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/336,587 12/17/2008
26681 7590 03/04/2019
Driggs, Hogg, Daugherty & Del Zoppo Co., LP.A.
38500 CHARDON ROAD
DEPT. IEN
WILLOUGHBY HILLS, OH 44094
Rick A. Hamilton II
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
END9200802l4US1_IEN106568 2190
EXAMINER
ALLEN, AKIBA KANELLE
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
usptocommunications@driggslaw.com
mwheeler@driggslaw.com
cgiacomazzo@driggslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICK A. HAMILTON II, NA VEEN LAMBA,
BENJAMIN G. MORRIS, and JAMES W. SEAMAN
Appeal2017-011603
Application 12/336,587 1
Technology Center 3600
Before, JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-3, 5-9, 21-29 and 31. We have jurisdiction
under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
Appeal2017-011603
Application 12/336,587
THE INVENTION
Appellants' claims relate to variable thoroughfare toll fees provided as
a function of geographic criteria. (Spec. ,r 1 ).
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A computer-implemented method for selecting and
applying variable thoroughfare travel fees, comprising executing on a
processor the steps of:
determining a use of a toll thoroughfare by a first traveler
that comprises traveling in a toll zone on a portion of the toll
thoroughfare that has a volume of traffic from an origin point to a
destination point over a travel time period;
determining a use of the toll thoroughfare by a second
traveler that is similar to the use of the portion of toll thoroughfare by
the first traveler with respect to distance travelled, location of use,
time of use and volume of traffic on the portion of toll thoroughfare,
via comprising traveling in the toll zone on the toll thoroughfare
portion from the origin point to the destination point over the travel
time period;
identifying an association of the use of the toll thoroughfare
by the first traveler to a first address within a first geographic impact
region, and an association of the use of the toll thoroughfare by the
second traveler to a second address that is different from the first
address and that is within a second geographic impact region that is
different from and geographically distinct from the first geographic
impact region, wherein the first and second geographic impact regions
have different outer boundaries, and wherein the first geographic
impact region is physically remote from and does not encompass the
toll thoroughfare portion travelled by the first traveler and the second
traveler in the toll zone from the origin point to the destination point
over the travel time period;
selecting a first toll rate for the use of the toll thoroughfare by
the first traveler as a function of association to the first geographic
impact region via the first address, and a second toll rate for the use of
the toll thoroughfare by the second traveler as a function of
association to the second geographic impact region via the second
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address, wherein the second toll rate is different from the first toll rate
for the travel time period and the volume of traffic; and
charging a first toll as a function of applying the first toll rate to
the use of the toll thoroughfare by the first traveler during the travel
time period, and a second toll as a function of applying the second toll
rate to the use of the toll thoroughfare by the second traveler
during the travel time period, wherein the second charged toll is
different from the first charged toll.
THE REJECTION
The following rejection is before us for review.
Claims 1-3, 5-9, 21-29 and 31 are rejected under 35 U.S.C. § 101.
ANALYSIS
35 U.S.C. § 101 REJECTION
We affirm the rejection of claims 1-3, 5-9, 21-29 and 31 under
35 U.S.C. § 101.
The Appellants argued claims 1-3, 5-9, 21-29 and 31 as a group.
(Appeal Br. 6). We select claim 1 as the representative claim for this group,
and the remaining claims stand or fall with claim 1. See 3 7 C.F .R.
§ 4I.37(c)(l)(iv) (2015).
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. v. CLS Banklnt'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
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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 id. 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. Kappas, 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 (Gottschalkv. 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 184 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
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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 tum 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).
"[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. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("2019 Memorandum"). Under that
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
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interactions such as a fundamental economic practice, or mental processes);
and
(2) additional elements that integrate the judicial exception into a
practical application, i.e., that "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." 2019 Memorandum at 18; see also 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 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 2019 Memorandum.
The Federal Circuit has explained that "the 'directed to' inquiry
applies a stage-one filter to claims, considered in light of the [S]pecification,
based on whether 'their character as a whole is directed to excluded subject
matter."' Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
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qualifies as an "abstract idea" for which computers are invoked merely as a
tool. See id. at 1335-36.
In so doing, as indicated above, we apply a "directed to" two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, 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 2019
Memorandum.
The Examiner found that the claims are "directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more. Claim(s) 1, 22, and 27 are directed to the
abstract idea of selecting toll rates, as shown by the 'determining,'
'determining,' 'identifying,' 'selecting,' and 'charging' limitations." (Final
Act. 2). The Examiner concluded,
This abstract idea [is] similar to abstract ideas
found by the courts, including []computing a price
for the sale of a fixed income asset, "an idea 'of
itself" because the claim can be performed in the
human mind, or by a human using pen and paper,
as well as "certain methods of organizing human
activity" because the claim is directed to managing
relationships or transactions between people and
sales activities. See July 2015 Update: Interim
Eligibility Guidance Quick Reference Sheet.
Id. at 2-3. We agree with the Examiner. That is, we find the steps:
• determining use through a toll thoroughfare by first and second
travelers;
• identifying an association of the use of the toll thoroughfare by the
first traveler to a first address within a first geographic impact region,
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and an association of the use of the toll thoroughfare by the second
traveler to a second address that is different from the first address and
that is within a second geographic impact region that is different from
and geographically distinct from the first geographic impact region
screenmg;
• selecting a first toll rate for the use of the toll thoroughfare by the first
traveler as a function of association to the first geographic impact
region via the first address, and a second toll rate for the use of the toll
thoroughfare by the second traveler as a function of association to the
second geographic impact region via the second address,
constitute "analyzing information by steps people go through in their minds,
or by mathematical algorithms, without more," and are "essentially mental
processes within the abstract-idea category." Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016).
In addition, we find that claim 1 is also directed to a method of
organizing human activity by "applying variable thoroughfare travel fees
(Claim 1 )" to influence human decision making of selected travel routes.
The patent-ineligible end of the spectrum includes methods of organizing
human activity. See Alice 573 U.S. at 217-221.
Thus, we find that the claims recite a judicial exception of a mental
process as well as a method of organizing human activity.
Turning to the second prong of the "directed to" test, claim 1 only
generically requires "a processor." We fail to see how the generic recitation
of a computer component and/or of a system so integrates the judicial
exception as to "impose a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception." 2019 Memorandum at 18.
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That the claims do not preempt all forms of the abstraction or may be
limited to toll rates, does not make them any less abstract. See OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) ("And that
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.").
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an "inventive concept" in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217 (quoting Mayo Collaborative Servs., 566 U.S. at 72-
73).
Concerning this step the Examiner found,
The claim(s) does/do not include additional
elements that are sufficient to amount to
significantly more than the judicial exception
because claim 1 may be performed entirely
manually, as it includes no particular computer
hardware, and the recitation of "computer-
implemented" in the preamble is not given
patentable weight to any particular method step.
Claims 22 and 27 recite computer elements
including a processor, a computer readable
memory, and a computer readable storage medium,
however, these computer elements operate as
generic computer components whose
implementation would be routine m any
computerized embodiment. Accordingly, the
elements, both alone and in combination, do not
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amount to significantly more than the abstract idea
itself.
(Final Act. 3). We agree with the Examiner. "[T]he relevant question is
whether the claims here do more than simply instruct the practitioner to
implement the abstract idea ... on a generic computer." Alice, 573 U.S.
at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data amounts to
electronic data query, retrieval and execution-the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. See Elec. Power
Grp., 830 F.3d 1354; see also In re Katz Interactive Call Processing Patent
Litig, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower
construction of the terms 'processing,' 'receiving,' and 'storing,' ... those
functions can be achieved by any general purpose computer without special
programming"). In short, each step does no more than require a generic
computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants' claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis
( determining/identifying) and resultant data execution is equally generic and
conventional or otherwise held to be abstract. See Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving,
selecting, offering for exchange, display, allowing access, and receiving
payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath &
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Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence
of data retrieval, analysis, modification, generation, display, and
transmission was abstract), Two-Way Media Ltd. v. Comcast Cable
Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of
processing, routing, controlling, and monitoring was abstract). The ordering
of the steps is, therefore, ordinary and conventional.
Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract ideas of a mental process and a method of
organizing human activity using some unspecified, generic computer. Under
our precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 226.
We have reviewed all the arguments (App. Br. 6-11, Reply Br. 2-5)
Appellants have submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of the same.
Appellants argue,
The Examiner fails to consider whether their [sic]
character of the claim limitations as a whole is
directed to a patent ineligible concept, improperly
describes the claims at a high level of abstraction
untethered from the language of the claim in
determining the focus of the claimed invention,
and ignores the admonishment that an invention's
ability to run on a general purpose computer does
not doom the claim (Memorandum on Enfish and
TL! Communications).
(Appeal Br. 8).
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In light of the breadth of claim 1, the Appellants' argument is not
persuasive as to error in the rejection because, "[ w ]hen claims like the
Asserted Claims are directed to an abstract idea and merely require generic
computer implementation, they do not move into section 101 eligibility
territory." Smart Systems Innovations, LLC v. Chicago Transit Authority,
873 F.3d 1364 (2017) (citations and internal quotations omitted). Here we
found above that the claims are directed to the abstract ideas of a mental
process as well as a method of organizing human activity. The generically
recited "processor" we find fails to impose a meaningful limit on the judicial
exception, such that the claim using a processor is more than a drafting
effort designed to monopolize the judicial exception. See 2019
Memorandum at 18.
Appellants further argue that:
the claims may recite an invention that is not
merely routine or conventional (Bascom at 11-12),
and [ the Examiner] fails to look to the claims as an
ordered combination, without ignoring the
requirements of the individual steps, in applying
step two of the Alice test to determine whether the
elements in combination are more than the non-
conventional and non-generic arrangement of
known, conventional elements.
(Appeal Br. 8).
We disagree with Appellants because as found above, when
considered as an ordered combination, the computer components of
Appellants' claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis
( determining/identifying/selecting) is equally generic and conventional or
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otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F .3d
715.
Appellants further argue, "Pursuant to consideration ( 1) of the
Step 2B analysis 'Significantly More' considerations, the claimed device
aspects provide an improvement to the field of differentially selecting and
applying variable thoroughfare travel fees" (Appeal Br. 8); "[t]his is useful
in autonomously implementing policies influencing population densities or
traffic (Appeal Br. 9)."
We disagree with Appellants. The question here is whether the claims
as a whole "focus on a specific means or method that improves the relevant
technology" or are "directed to a result or effect that itself is the abstract idea
and merely invoke generic processes and machinery." McRO, Inc. v. Bandai
Namco Games Am., Inc. 837 F.3d 1299, 1314 (Fed. Cir. 2016). In this case,
the claims, as a whole, are focused on satisfying certain contingencies for
"implementing policies influencing population densities or traffic" (Reply
Br. 9) by charging a first toll as a function of applying the first toll rate to the
use of the toll thoroughfare by the first traveler" and "a second toll as a
function of applying the second toll rate to the use of the toll thoroughfare
by the second traveler" (Claim 1). We find these limitations to be a result or
an effect, and not an improvement in the technology of how, for example, a
processor, memory, and program works.
For the reasons identified above, we determine there are no
deficiencies in the Examiner's prima facie case of patent ineligibility of the
rejected claims based on the record before us.
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CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-3, 5-9,
21-29 and 31under 35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 1-3, 5-9, 21-29 and 31
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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