Ex Parte Nordstrand

Patent Trials and Appeals Board

Dec 10, 2018

13947988 - (D) (P.T.A.B. Dec. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/947,988 07/22/2013
20350 7590 12/12/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Earl Nordstrand
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.
91908-001410US-876825 3640
EXAMINER
STERRETT, JONATHAN G
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
12/12/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EARL NORDSTRAND
Appeal2017-009614
Application 13/94 7,988
Technology Center 3600
Before CARLA M. KRIVAK, CARL W. WHITEHEAD JR., and
JOHN R. KENNY, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2017-009614
Application 13/947,988
STATEMENT OF THE CASE
Appellant's invention is directed to "a computer-implemented method
comprising a process of receiving geographic data corresponding to a
geographic area, receiving population data corresponding to a population of
the geographic area, and generating a distribution of the population over the
geographic area based on characteristics of geographic features of the
geographic area." Abstract.
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. A computer-implemented method comprising:
receiving electronic geographic image data
corresponding to a geographic area, wherein the geographic
area includes geographic features;
receiving electronic road-based data including a location
of a plurality of roads within the geographic area;
calculating, by the processor, a road density for each
location of the plurality of roads;
calculating, by the processor, a weighted coefficient for
the geographic image data based on the geographic features;
calculating, by the processor, a weighted coefficient for
the road-based data based on the location and density of the
plurality of roads;
generating, by the processor, a dasymetric surface map
based on the combined weighted geographic image data and the
weighted road-based data;
receiving population data corresponding to a population
of the geographic area; and
generating, by the processor, a distribution of the
population over the geographic area based on the combination
of the population data and dasymetric surface map.
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Application 13/947,988
REJECTIONS and REFERENCES
The Examiner rejected claims 1-20 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
The Examiner rejected claims 1-20 under 35 U.S.C. § 101 as directed
to an abstract idea.
The Examiner rejected claims 1-3, 5, 6, 11-13, and 15-20 under
35 U.S.C. § I03(a) based upon the teachings of Maantay (Juliana Astrud
Maantay et al., Mapping Population Distribution in the Urban Environment:
The Cadastral-based Expert Dasymetric System (CEDS), 34:2
CARTOGRAPHY & GEOGRAPHIC INFO. SCI. 77-102 (2007)) and Xie (Yichun
Xie, The Overlaid Network Algorithms for Areal Interpolation Problem,
19:4 COMPUT. ENVIRON. & URBAN SYS. 287-306 (1995)).
The Examiner rejected claims 4 and 14 under 35 U.S.C. § I03(a)
based upon the teachings ofMaantay, Xie, and Deardorff (US 2009/0003657
Al; Jan. 1, 2009).
The Examiner rejected claims 7-10 under 35 U.S.C. § I03(a) based
upon the teachings ofMaantay, Xie, and Dumas (US 2005/0222829 Al;
Oct. 6, 2005).
ANALYSIS
Rejection under 35 USC§ 112
The Examiner finds claims 1-20 fail to satisfy the § 112 (a) written
description requirement. Non-Final Act. 16-27. The Examiner finds the
claims are broad and the Specification fails to "adequately describe the
structure and functionality described" and to clearly convey what the
Appellant has invented. Id. at 27. Specifically, the Examiner states "[h ]ow
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Application 13/947,988
the various features are weighted is not described" in Appellant's
Specification. Id. at 17.
Appellant contends:
One of ordinary skill in the art would appreciate and easily
discern the appropriate values to assign specific features and
multipliers, which could be different for different applications,
based on the characteristics of their particular application. That
is, one of ordinary skill in the art would easily interpolate
appropriate values for the various weightings.
App. Br. 11. Appellant also asserts paragraph 46 of the Specification recites
examples of specific ranges of weights. Id. Thus, "one of ordinary skill in
the art would easily interpolate appropriate values for the various
weightings." Id.
Specifically, Appellant contends the claim recites calculating "a
weighted coefficient for the road-based data based on the location and
density of the plurality of roads." Appellant states, generally, paragraphs
33--46, and Figures 4 and 5, support the limitations recited in the claims.
App. Br. 4--5.
There is, however, no written description in paragraphs 33--46, nor
anywhere in Appellant's Specification, for a "weighted coefficient" let alone
a "weighted coefficient for the road-based data based on the location and
density of the plurality of roads" ( emphasis added). Because there is no
written support for weighted coefficient based on the location of the plurality
of roads, we sustain the Examiner's rejection under 35 U.S.C. § 112(a).
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Application 13/947,988
Re} ection under 3 5 US. C. § 101
Patent eligibility is a question of law that is reviewable de nova.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Patentable subject matter is defined by 35 U.S.C. § 101 as follows:
[ w ]hoever 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.
In interpreting this statute, the Supreme Court emphasizes that patent
protection should not preempt "the basic tools of scientific and technological
work." Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012); Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014). The rationale is that
patents directed to basic building blocks of technology would not "promote
the progress of science" under the U.S. Constitution, Article I, Section 8,
Clause 8, but rather, would impede it. Accordingly, laws of nature, natural
phenomena, and abstract ideas are not patent-eligible subject matter. Thales
Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 134
S. Ct. at 2354).
To determine whether subject matter is patentable under § 101, the
Supreme Court has set forth a two part test "for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts." Alice, 134 S. Ct. at
2355. The first step in the analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts," such as an
abstract idea. Id. (citation omitted). For computer-related technologies, "the
first step in the Alice inquiry ... asks whether the focus of the claims is on
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the specific asserted improvement in computer capabilities" ( which would be
eligible subject matter) or instead "on a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool" (which would be
ineligible subject matter). Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327,
1335-36, 1338 (Fed. Cir. 2016) (emphasis added). "If the claims are not
directed to an abstract idea [or other patent-ineligible concept], the inquiry
ends. If the claims are 'directed to' an abstract idea, then the inquiry
proceeds to the second step of the Alice framework." McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016).
The second step in the Alice framework is to consider 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, 134 S. Ct. at 2355 (citing
Mayo, 566 U.S. at 78). In other words, the second step is to "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 significantly more
than a patent upon the [ineligible concept] itself."' Id. ( citing Mayo, 566
U.S. at 72-73). The "inventive concept" must be significantly more than the
abstract idea itself, and cannot be simply an instruction to implement or
apply the abstract idea on a computer. Alice, 134 S. Ct. at 2358. "'[W]ell-
understood, routine, [and] conventional activit[ies]' previously known to the
industry" are insufficient to transform an abstract idea into patent-eligible
subject matter. Id. at 2359 (citing Mayo, 566 U.S. at 73).
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first part of the Alice/Mayo analysis, the Examiner
determines claims 1-20 are directed to a "series of steps instructing how to
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Application 13/947,988
map various factors of human population (e.g. demographic characteristics),
which is a mathematical relationship/formulas and thus an abstract idea."
Non-Final Act. 8.
Appellant contends the Examiner has over generalized the claims and
"ignores the novel and complex processes (e.g., image science, mapping,
manipulating electronic data, etc.)" involved in analyzing image data and
generating a dasymetric surface map and a corresponding population
distribution. App. Br. 7. Appellant asserts these steps cannot be performed
by a human alone. Id. Appellant recites district court cases that do not bind
us and states "it is unfathomable that the Examiner can view (i) using image
processing techniques to discern geographic features in a pixelated image"
and the calculating, generating, and determining steps are "computationally
expensive." Id. at 7-8.
Initially, we note there is no recitation in the claims regarding
discerning geographic features in a pixelated image. Also, we agree with the
Examiner, Appellant's invention is directed to "generating a 'dasymetric
surface map"' ( emphasis omitted), which can be performed by a human.
Ans. 6. The Examiner provides references from the 1800' s supporting this
determination. Id. at 7. We, therefore, agree Appellant's "invention is thus
a modem embodiment of this approach, by using digital map layers in order
to show geographic relationships within a map." Id. at 9 ( citing Versata
Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015); DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1255 (Fed. Cir. 2014)).
Additionally, the Federal Circuit concluded "a process defined simply
as using a computer to perform a series of mental steps that people, aware of
each step, can and regularly do perform in their heads" is not patent eligible.
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See SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App 'x 950,
954 (Fed. Cir. 2014) (unpublished) (citing CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("Such a method that
can be performed by human thought alone is merely an abstract idea and is
not patent-eligible under§ 101.")). "[W]ith the exception of generic
computer-implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with pen and
paper." Intellectual Ventures I LLCv. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1095 (Fed. Cir. 2016) ("While the claimed system and method
certainly purport to accelerate the process of analyzing audit log data, the
speed increase comes from the capabilities of a general-purpose computer,
rather than the patented method itself.")
Thus, we agree under Alice step 1, Appellant's claims are directed to
an abstract idea.
Alice/Mayo-Step 2 (Inventive Concept)
Appellant also alleges the claims include more than a generic
computer, which would not be capable of performing the functionality
recited in the claims. App. Br. 9. Appellant asserts only a special
purpose/programmed computer is capable of performing the claim and the
claims "contain unconventional steps that confine the claim to a particular
useful application." Id. at 10. Appellant, however, does not specify what
the special purpose computer is and what the purported unconventional steps
are.
Appellant's Specification, paragraph 83, recites"[ c ]omputer system
800 can be implemented as any of various computing devices, including,
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e.g., a desktop or laptop computer, tablet computer, smart phone, personal
digital assistant (PDA), or any other type of computing device," which are
all generic computing devices. See also Spec. ,r 84 (which recites a generic
processor).
Thus, the Examiner finds, and we agree, Appellant's claims do not
include additional elements that amount to significantly more than the
judicial exception. Appellant's claims are directed to an abstract idea
including generic computer elements, adding no meaningful limitation to the
abstract idea because they are routine.
We, therefore, sustain the Examiner's rejection of claims 1-20 as
patent ineligible.
Rejection under 35 USC§ 103
The Examiner finds Maantay discloses all the claim limitations except
for calculating a weighted coefficient for the road based data, generating a
dasymetric surface map based on the weighted geographic image data and
weighted road-based data, receiving population data corresponding to a
geographic area, and generating a distribution of the population over the
geographic area based on the population data and dasymetric surface map.
Non-Final Act. 30-34. The Examiner finds Xie discloses these limitations.
Id. at 34--36 (citing Xie 299 ("Common sense suggests that residential
densities or population concentrations differ along different categories of
roads.")).
Appellant contends the Examiner erred in finding Maantay and Xie do
not teach or suggest "calculating ... a road density ... " as claimed. App.
Br. 11-12. That is, Appellant asserts "Maantay discusses deriving weights
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for interpolating population based on the existence of streets, not on the
density of the streets." Id. at 11. Xie discloses TIGER files (as does
Maantay) which include classifications of various types of streets, but not
the density of roads. Id. at 12. We do not agree.
Xie discloses:
The TIGER/Line files contain all map features, including
information on street segments which are particularly useful for
areal population interpolation. People are sheltered by houses.
Houses are usually located along the sides of streets or along
roads. As a result, the distribution of population in an areal unit
is closely related to the street network. This suggests that the
street network provides an important supplementary information
about a population's distribution over an area.
Xie 294 ( emphasis added). Xie then states "[ c ]ommon sense suggests that
residential densities or population concentrations differ along different
categories of roads." Id. at 299. Maantay also discloses using TIGER files
for interpolating population and states "[b ]uilding on previous similar work
by Ong and Houston (2003) and Xie (1996), they used the street and road
grid as a proxy for approximate population and housing unit density surfaces
for census tracts in the county." Maantay 84 (col. 1) (emphasis added).
Maantay also discloses "the street-weighting method offers a 70 percent
improvement over areal-weighting for the estimation of the housing unit
count variable and a 20 percent improvement for the estimation of the total
population count variable." Id. at 84 (col. I-col. 2). Contrary to Appellant's
assertion, the combination of Xie and Maantay at least suggest calculating a
density for each location of a plurality of roads, using TIGER or other data,
as claimed.
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Thus, we sustain the Examiner's rejection of independent claims 1,
11, and 17, and dependent claims 2-10, 12-16, and 18-20, not separately
argued.
DECISION
The Examiner's decision rejecting claims 1-20 under 35 U.S.C.
§ 112(a) is affirmed.
The Examiner's decision rejecting claims 1-20 under 35 U.S.C. § 101
is affirmed.
The Examiner's decision rejecting claims 1-20 under 35 U.S.C.
§ 103(a) 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)(l )(iv).
AFFIRMED
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