Ex Parte KUBLER et al

Patent Trials and Appeals Board

May 22, 2019

11764815 - (D) (P.T.A.B. May. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/764,815 06/19/2007 Anette KUBLER
86528 7590 05/24/2019
Slayden Grubert Beard PLLC
401 Congress Avenue
Suite 1650
Austin, TX 78701
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.
03869.117453 6333
EXAMINER
BOSWELL, BETH V
ART UNIT PAPER NUMBER
3600
NOTIFICATION DATE DELIVERY MODE
05/24/2019 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):
trosson@sgbfirm.com
patent@sgbfirm.com
dallen@sgbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANETTE KUBLER and WILLFRIED WIENHOL T
Appeal2017-008579
Application 11/764,815
Technology Center 3600
Before KAL YANK. DESHPANDE, CHARLES J. BOUDREAU,
and SHARON PENICK, Administrative Patent Judges.
BOUDREAU, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-10 and 12-19, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b ).
WeAFFIRM.2
1 Appellants identify Siemens Aktiengesellschaft as the real party in interest. App.
Br. 2.
2 This Decision refers to the Examiner's Final Office Action mailed June 3, 2016
("Final Act."); Appellants' Appeal Brief filed November 3, 2016 ("App. Br."); the
Examiner's Answer mailed March 23, 2017 ("Ans."); Appellants' Reply Brief
filed May 22, 2017 ("Reply Br."); and the original Specification filed June 19,
2007 ("Spec.").
Appeal2017-008579
Application 11/764,815
STATEMENT OF THE CASE
The Claimed Invention
Appellants' invention relates to urban planning and identifying
interdependencies among urban development factors. Spec. 1:9-11, 1:25-28. In
particular, the invention relates to "identifying dependency loops ... in an urban
development graph." Id. at 1 : 5-7.
Claims 1, 6, and 12 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal:
1. A method for planning urban development, said method
compnsmg:
inputting urban development factors, via an interface, into an
urban development link matrix template displayed on a display of an
apparatus for analyzing dependency loops in an urban development
graph, the apparatus including at least one non-transitory computer
readable medium storing instructions translatable by at least one
processor;
inputting weighting factors, via the interface, into the apparatus;
generating an urban development link matrix (UDLM) by the
apparatus using the urban development factors and the weighting
factors;
storing the generated urban development link matrix (UDLM)
in a memory of the apparatus;
evaluating the stored urban development link matrix (UDLM)
using a calculating unit of the apparatus employing an ant algorithm
to identify dependency loops in and generate an urban development
graph, the urban development graph having nodes each representing
one of the inputted urban development factors, and
identifying key factors for development of an urban
infrastructure based on the evaluation of the UDLM and prioritizing
investment based on the key factors identified, and
identifying each loop as self-regulating or unstable,
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wherein said nodes are connected to each other via weighted
edges describing dependencies between said nodes, and
wherein said evaluating step includes calculating an objective
function value for each loop of said urban development graph and
sorting the loops according to the respective calculated objective
function values of said loops.
App. Br. 10 (App. A).
Rejections on Appeal
Claims 1-10 and 12-19 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 2-6.
Claims 1-10 and 12-19 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Bachels et al. 3,4 in view of Simons et al. 5 and Ouimet. 6
Final Act. 9-18.
Claims 1-10 and 12-19 stand rejected under 35 U.S.C. § l 12(a) or pre-AIA
35 U.S.C. § 112, first paragraph as failing to comply with the enablement
requirement. Final Act. 6-8. 7
3 Mark Bachels et al., Using a Systems Approach to Unravel Feedback
Mechanisms Affecting Urban Transport Choices, Canterbury Regional Council
(and University of Canterbury) (1999) ("Bachels").
4 The Examiner refers to Bachels as "Exhibit U" in the Final Office Action and
Answer.
5 U.S. Patent No. 6,044,222 (Mar. 28, 2000) ("Simons").
6 U.S. Patent Pub. No. 2002/0107819 Al (Aug. 8, 2002).
7 A further rejection, of claims 1-5 and 16-18 as being indefinite under 35 U.S.C.
§ l 12(b) or pre-AIA 35 U.S.C. § 112, second paragraph (Final Act. 8), has been
withdrawn. Ans. 16-17.
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Application 11/764,815
ANALYSIS
Rejection 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, or [a] new and useful
improvement thereof." 35 U.S.C. § 101. However, the Supreme Court has long
interpreted § 101 to "contain[] an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v. CLS
Bankint'l, 573 U.S. 208,216 (2014) (quotingAss'nfor Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
In Alice, the Supreme Court reiterated the two-step framework previously set
forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77
(2012) "for distinguishing patents that claim laws of nature, natural phenomena,
and abstract ideas from those that claim patent eligible applications of those
concepts." Alice, 573 U.S. at 217. The first step in this analysis is to "determine
whether the claims at issue are directed to one of those patent-ineligible concepts,"
e.g., to an abstract idea. Id. Concepts determined to be abstract ideas include
certain methods of organizing human activity, such as fundamental economic
practices (id. at 219-20; Bilski v. Kappas, 561 U.S. 593, 611 (2010)); mathematical
formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes
( Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). If it is determined that the claims
are directed to a patent-ineligible concept, the second step of the analysis requires
consideration of the elements of the claims "individually and 'as an ordered
combination"' to determine whether there are additional elements that "'transform
the nature of the claim' into a patent-eligible application." Alice, 573 U.S. at 217
( quoting Mayo, 566 U.S. at 78, 79). In other words, the claims must contain an
"inventive concept," or some element or combination of elements "sufficient to
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Application 11/764,815
ensure that the patent in practice amounts to significantly more than a patent upon
the [abstract idea] itself." Id. at 217-18 (quoting Mayo, 566 U.S. at 72-73).
The US PTO recently published revised guidance on the application of§ 101.
USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 ("Revised Guidance"). 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
interactions, or mental processes) ("Step 2A, Prong l "); and
(2) additional elements that integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)-(c), (e)-(h)) ("Step 2A, Prong 2").
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then ("Step 2B") look to whether the
claim:
(3) adds a specific limitation beyond the judicial exception that is not "well-
understood, routine, and 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 Revised Guidance
The Examiner determines that claims 1-10 and 12-19 are directed to an
abstract idea. Final Act. 4. The Examiner finds the claims to be "directed towards
a mathematical relationship or formula" and "aligned with 'managing relationships
between people or transactions"' and "managing human behavior." Id.; Ans. 19
(internal quotation marks omitted). The Examiner further determines that the
claims merely recite generic computer components and extra-solution data-
gathering activity, and thus do not amount to significantly more than the abstract
idea itself. Final Act. 5-6; Ans. 20-21.
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Appellants argue that the claims "highlight the practical application of the
methods recited" and "are directed at a concrete process for planning urban
development, including a very specific computer-implemented process and
technique." App. Br. 5; Reply Br. 2. Appellants further argue that, "[a]lthough the
additional limitations recited may not amount to significantly more than the broad
concept, when looking at the additional limitations as an ordered combination, the
invention as a whole amounts to significantly more than simply organizing and
comparing data." App. Br. 7; Reply Br. 3-4.8
Under Step 2A, Prong 1, we agree with the Examiner that the claims recite a
judicial exception, i.e., an abstract idea. In particular, we agree with the Examiner
that the claims recite a mathematical concept. See Final Act. 4; Ans. 19. We
additionally determine that the claims recite mental processes.
For example, claim 1 recites "generating an urban development link matrix
(UDLM) by the apparatus using the urban development factors and the weighting
factors," "evaluating the stored urban development link matrix (UDLM) using a
calculating unit of the apparatus ... to identify dependency loops in and generate
an urban development graph, the urban development graph having nodes each
representing one of the inputted urban development factors," "identifying key
factors for development of an urban infrastructure based on the evaluation of the
UDLM and prioritizing investment based on the key factors identified,"
"identifying each loop as self-regulating or unstable," and "wherein said nodes are
8 Appellants additionally argue that the Examiner has not explained how the claims
correspond to a concept the courts have identified as an abstract idea, in
accordance with the USPTO's May 4, 2016 Memorandum, Formulating a Subject
Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject
Matter Eligibility Rejection. App. Br. 6; Reply Br. 2. We note, however, that the
May 4, 2016 Memorandum is superseded by the January 7, 2019 Memorandum.
See Revised Guidance at 51.
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Application 11/764,815
connected to each other via weighted edges describing dependencies between said
nodes." Under their broadest reasonable interpretation, these "generating,"
"evaluating," "identifying," and "prioritizing" limitations cover performance of the
limitations in the mind, but for the recitation of generic components. That is, other
than reciting "by the apparatus" and "using a calculating unit of the apparatus,"
nothing in the claim precludes these steps from practically being performed in the
mind or manually. For example, but for the "apparatus" and "calculating unit"
language, the claim encompasses mentally and manually generating a UDLM using
the urban development factors and the weighting factors, mentally evaluating the
UDLM to identify dependency loops in, and to mentally and manually generate, an
urban development graph, the urban development graph having nodes each
representing one of the urban development factors, wherein said nodes are
connected to each other via weighted edges describing dependencies between said
nodes, mentally identifying key factors for development of an urban infrastructure
based on the evaluation of the UDLM and mentally prioritizing investment based
on the key factors identified, and mentally identifying each loop as self-regulating
or unstable. Although Appellants argue that "an urban development graph
UDG ... can be quite complex so that it is impossible for a user without automatic
calculation of the dependency loops to recognize dependencies between the
different factors f' (App. Br. 7; Reply Br. 4) (emphasis added) (citing Spec. 7:26-
31; Fig. 4), the claim still encompasses generating a UDLM and a UDG that are
not too complex to mentally identify dependency loops and key factors. Thus,
these limitations are mental processes.
Claim 1 further recites "wherein said evaluating step includes calculating an
objective function value for each loop of said urban development graph and sorting
the loops according to the respective calculated objective function values of said
loops." In reciting "calculating an objective function value for each loop of said
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urban development graph," the claim recites a mathematical concept. See Spec.
6:33-7:15 (disclosing mathematical formulas for objective function OF in different
embodiments).
Under its broadest reasonable interpretation, the "calculating" limitation also
covers performance of the limitation in the mind. That is, nothing in the claim
precludes the "calculating" step from practically being performed in the human
mind. For example, the claim encompasses mentally and/or manually calculating
an objective function value for each loop of the urban development graph. See,
e.g., Spec. 8: 11-12 ( disclosing an embodiment in which "the objective function OF
is a measure for the length of a dependency loop"). Thus, this limitation is also
mental process.
Under its broadest reasonable interpretation, the "sorting" limitation also
covers performance of that limitation in the mind. That is, nothing in the claim
precludes the "sorting" step from practically being performed in the human mind.
For example, the claim encompasses mentally and/or manually sorting the loops
according to the respective calculated objective function values of said loops. This
limitation is also a mental process.
Thus, these limitations recite mathematical concepts and mental processes as
identified in the Revised Guidance, and, thus, an abstract idea.
Under Step 2A, Prong 2, we determine that the claims do not integrate the
abstract idea into a practical application. For example, claim 1 additionally recites
"inputting urban development factors, via an interface, into an urban development
link matrix template displayed on a display of an apparatus for analyzing
dependency loops in an urban development graph, the apparatus including at least
one non-transitory computer readable medium storing instructions translatable by
at least one processor," "inputting weighting factors, via the interface, into the
apparatus," and "storing the generated urban development link matrix (UDLM) in
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a memory of the apparatus." We agree with the Examiner that the steps of
"inputting urban development factors, via an interface, into an urban development
link matrix template displayed on a display of an apparatus ... " and "inputting
weighting factors, via the interface, into the apparatus" amount to mere data
gathering and insignificant extra-solution activity, as they are recited at a high level
of generality, i.e., as a general means of gathering the "urban development factors"
and "weighting factors"-data necessary to perform the "generating,"
"evaluating," "identifying," and "prioritizing" steps. See Final Act. 5-6; Ans. 20.
Likewise, the "storing" step is also insignificant extra-solution activity because it is
recited at a high level of generality, i.e., as a general means of storing the UDLM
needed to perform the "evaluating," "identifying," and "prioritizing" steps. See
Revised Guidance at 55; MPEP § 2106.05(g).
We further agree with the Examiner that the claims merely recite generic
computer components. See Final Act. 5; Ans. 20-21. For example, claim l's
recited "apparatus," "interface," "display," "non-transitory computer-readable
medium," "processor," "memory," and "calculating unit" are recited at a high level
of generality, i.e. as generic components performing generic computer functions of
receiving and displaying inputted data and storing and processing computer
instructions and data. These generic limitations merely apply the abstract idea
using generic computer components. See Revised Guidance at 55; MPEP
§ 2106.05(±). As noted by the Examiner, they do not reflect an improvement in the
functioning of a computer, or to any other technology or technical field. See Final
Act. 5; Ans. 21; see also Revised Guidance at 55; MPEP § 2106.05(a). Nor do
they include any particular machine that is integral to the claim. See Revised
Guidance at 55; MPEP § 2106.05(b).
Thus, contrary to Appellants' argument that the claims "highlight the
practical application of the methods recited" (App. Br. 5; Reply Br. 2), these
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additional limitations do not integrate the abstract idea into a practical application
because they do not impose any meaningful limits on practicing the abstract idea.
Accordingly, we agree with the Examiner that the claims are directed to an
abstract idea.
Under Step 2B, we discern no specific limitation beyond the judicial
exception, i.e., the abstract idea, that is not well-understood, routine, and
conventional in the field. For example, claim 1 additionally recites "employing an
ant algorithm." The "ant algorithm" limitation simply appends well-understood,
routine, conventional activities previously known to the industry, specified at a
high level of generality, to the abstract idea. Indeed, Appellants indicate that ant
algorithms "are known techniques for solving various combinatorial optimization
problems, often used in computer science to design routing and networking
systems to find the shortest path for directing data and information," and point to
the Examiner's citation of Ouimet as demonstrating such. App. Br. 7 ( citing Final
Act. 10).
Reevaluating the extra-solution activity of "inputting urban development
factors," "inputting weighting factors," and "storing the generated urban
development link matrix (UDLM)" (see Revised Guidance at 56), we find nothing
unconventional in these steps of data gathering and data storing. Although
Appellants argue that, "when looking at the additional limitations as an ordered
combination, the invention as a whole amounts to significantly more than simply
organizing and comparing data" (App. Br. 7; Reply Br. 3-4), Appellants provide
no evidence of how the ordered combination is unconventional or amounts to
significantly more than the abstract idea to which the claim is otherwise directed.
These steps require no more than generic computer components performing
generic functions that are well-understood, routine, and conventional activities
previously known to the industry. As discussed above under Step 2A, Prong 2, the
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recited "apparatus," "interface," "display," "non-transitory computer-readable
medium," "processor," "memory," and "calculating unit" in claim 1 amount to no
more than mere instructions to apply the abstract idea using generic computer
components. Mere instructions to apply an abstract idea on a generic computer do
not provide an inventive concept. Alice, 573 U.S. at 223-24.
Accordingly, considering the claim elements individually and as an ordered
combination, we agree with the Examiner that they do not amount to significantly
more than the abstract idea to transform the nature of the claims into patent-eligible
subject matter.
For the foregoing reasons, we sustain the Examiner's rejection under
35 U.S.C. § 101 of independent claim 1, as well as independent claims 6 and 12
having commensurate limitations and dependent claims 2-5, 7-10, and 13-19,
which are not separately argued.
Rejection Under 35 U.S.C. § 103
The Examiner relies on Bachels for the limitation "identifying each loop as
self-regulating or unstable," as recited in independent claims 1, 6, and 12. Final
Act. 10, 18 (citing Bachels 2-3); Ans. 9, 22. Appellants argue that the prior art
fails to teach this limitation. App. Br. 8; Reply Br. 4.
We agree with Appellants that Bachels fails to teach "identifying each loop
as self-regulating or unstable." The portion of Bachels cited by the Examiner
discusses developing "qualitative systems models" for urban planning, in
particular, "[ q]ualitative feedback loops," but does not disclose identifying whether
the feedback loops are self-regulating or unstable. Bachels 2-3.
According to the Examiner, "self-regulating relat[ es] to qualitative systems
modelling" and "stable relat[ es] to linear systems approach." Final Act. 10, 18;
Ans. 9, 22. To the extent that the Examiner finds qualitative systems models (see
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Bachels 2-3) to be "self-regulating" loops, and linear planning approaches (see
Bachels 1, 11) to be "unstable" loops, we disagree with this interpretation of
"self-regulating" and "unstable," as it is inconsistent with the Specification's
disclosure. See Spec. 7-8 ( disclosing that "self-regulating dependency loops or
unstable loops can be identified" while discussing example of closed dependency
loop Lin Figure 5, in which increased traffic congestion negatively impacts
productivity and economic growth, which lowers affluence and car ownership,
ultimately resulting in reduced traffic congestion).
Although Bachels discloses a systems model showing "positive unchecked
feedback" (Bachels 4) and proposes introducing "'balancing' or negative feedback
policies" to counter it (Bachels 8-9), we do not find any suggestion in Bachels of
identifying each dependency loop as self-regulating or unstable, as claimed.
Accordingly, we do not sustain the Examiner's rejection of claims 1-10 and
12-19 under 35 U.S.C. § 103(a) as being unpatentable over Bachels, Simons, and
Ouimet.
Rejection Under 35 U.S.C. § 112
The Examiner determines that claims 1-10 and 12-19 are based on a
disclosure that is not enabling with respect to the "ant algorithm" (see independent
claims 1 and 12) and "evolutional algorithm" (see independent claims 6 and 12)
limitations. Final Act. 6-8. The Examiner finds that the Specification only
mentions the recited "ant algorithm" and "evolutional algorithm" without
disclosing "how to implement" them. Id.; see Spec. 10:31-33. According to the
Examiner, "there is no single 'ant algorithm' but are, instead, a family of
algorithms." Final Act. 7.
Appellants argue that the claims are enabled because "[a] person having
ordinary skill in the art ... would be able to apply the recited algorithms." App.
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Br. 8. Specifically, Appellants argue that "both ant algorithms ... and evolutional
algorithms are known techniques for solving various combinatorial optimization
problems, often used in computer science to design routing and networking
systems to find the shortest path for directing data and information." Id. at 7.
Appellants point to the Examiner's citation of Ouimet as demonstrating such. Id.
(citing Final Act. 10).
To meet the enablement requirement of 35 U.S.C. § 112, the disclosure, as
filed, must be sufficiently complete to enable one of ordinary skill in the art to
make and use the claimed invention '"without undue experimentation.'' In re
J!Vands, 858 F.2d 731, 737 (Fed. Cir. 1988). '"An inventor need not, however,
explain every detail since he is speaking to those skilled in the art.'' In re Hovvarth,
654 F.2d 103, 105 (CCPA 1981 ).
We are persuaded by Appellants that the claims are sufficiently enabled
because ant algorithms and evolutional algorithms are known types of algorithms
that one of ordinary skill in the art would have understood how to implement
without undue experimentation. For example, Ouimet, which is relied on by the
Examiner for its teaching of ant and evolutional algorithms (Final Act. 11, 16),
describes these algorithms as "common optimization algorithms" for complex
planning models. Ouimet ,-J 29; see also id. ,-i 71 (describing ant algorithms, among
others, as "general optimization methods"). The Examiner acknowledges that
using ant and evolutional algorithms is a "known technique" that "would have
yielded predictable results." Ans. 23-24.
Accordingly, we do not sustain the Examiner's rejection of claims 1-10 and
12-19 for lack of enablement under 35 U.S.C. § 112.
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DECISION
Because we have affirmed at least one ground of rejection with respect to
each claim on appeal, the Examiner's rejection of claims 1-10 and 12-19 is
affirmed. See 37 C.F.R. § 41.50(a)(l).
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv).
AFFIRMED
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