INTERNATIONAL BUSINESS MACHINES CORPORATIONDownload PDFPatent Trials and Appeals BoardMay 29, 20202019006994 (P.T.A.B. May. 29, 2020) Copy Citation 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. 14/105,016 12/12/2013 Michele Berlingerio YOR920130957US1 1030 48915 7590 05/29/2020 CANTOR COLBURN LLP-IBM YORKTOWN 20 Church Street 22nd Floor Hartford, CT 06103 EXAMINER RINES, ROBERT D ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 05/29/2020 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 MICHELE BERLINGERIO, ADI LONEL BOTEA, ERIC BOUILLET, FRANCESCO CALABRESE, and FABIO PINELLI Appeal 2019-006994 Application 14/105,016 Technology Center 3600 Before ALLEN R. MACDONALD, JEREMY J. CURCURI, and SCOTT RAEVSKY, Administrative Patent Judges. RAEVSKY, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 4, 5, 8–10, 13, 16–18, 21, and 23–26. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as International Business Machines, Inc. Appeal Br. 1. Appeal 2019-006994 Application 14/105,016 2 CLAIMED SUBJECT MATTER The claims relate to a method for inferring inconvenient travel experiences. Spec., Abstr. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for inferring inconvenient travel experiences, comprising: analyzing, with a processing device, a record of a movement of a traveler through a transportation network, wherein the record includes historical data related to the movement of the traveler through the transportation network; detecting, based at least in part on data received from a sensor, a traveler displacement pattern indicative of a potential inconvenience during a journey of the traveler through the transportation network, wherein the processing device does not receive an origin and a destination from the traveler, and wherein a sequence of locations of the traveler is tracked during a time period, and the travel displacement pattern is derived from the sequence; verifying a transportation network status corresponding to the potential inconvenience, wherein verifying the transport network status includes querying a database associated with the transport network regarding the transportation network status corresponding to the potential inconvenience; validating an inferred inconvenience based on the potential inconvenience and the transportation network status, wherein the validating the inferred inconvenience includes analyzing the movement of the traveler before and after the potential inconvenience, and wherein the validating the inferred inconvenience includes comparing the potential inconvenience to a threshold number of occurrences2 of the potential inconvenience during a time interval; and 2 On remand, the Examiner should reevaluate whether the Specification contains written description support for the recited “threshold number of occurrences,” as the paragraph identified by Appellant as supporting this Appeal 2019-006994 Application 14/105,016 3 responsive to validating the inferred inconvenience, causing, by the processing device utilizing a machine-readable instruction derived from the validating the inferred inconvenience, a modification to at least one transportation resource in the transportation network based upon the validation of the inferred inconvenience, wherein the at least one transportation resource modified corresponding to the time interval, and wherein modifying the transportation network comprises modifying a transportation resource operation schedule. REJECTION Claims 1, 4, 5, 8–10, 13, 16–18, 21, and 23–26 stand rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Final Act. 10.3 STANDARD OF REVIEW The Board conducts a limited de novo review of the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Arguments not made are waived. See id.; 37 C.F.R. § 41.37(c)(1)(iv). limitation (paragraph 29) does not appear to refer to a “threshold.” See Supp. Appeal Br. 2. 3 The rejection appears to refer to a previously-pending set of claims, 1–5, 8–13, 16–18, and 21–26. Final Act. 10. Appeal 2019-006994 Application 14/105,016 4 ANALYSIS Principles of Law 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 Bank Int’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 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. Kappos, 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 (Gottschalk v. Benson, 409 U.S. 63, 67–68 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing Appeal 2019-006994 Application 14/105,016 5 India rubber, smelting ores” (id. at 183 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))). If the claim is “directed to” an abstract idea, we turn 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. “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. (alterations in original) (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 USPTO recently published revised guidance on the application of § 101 (“Guidance”). See, e.g., USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”); USPTO, October 2019 Update: Subject Matter Eligibility (Oct. 17, 2019) (“October 2019 Update”), 84 Fed. Reg. 55942 (Oct. 18, 2019) (notice). Under the 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 activities such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)). Appeal 2019-006994 Application 14/105,016 6 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 activity” 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, 84 Fed. Reg. at 56. Step 2A, Prong One (Judicial Exception) The Examiner determines that claim 14 is directed to the abstract idea of “inferring inconvenient travel experiences and directing users to modify transportation resources, which is . . . a method of directing and organizing human actions and behaviors.” Final Act. 11. In the Answer, the Examiner determines that the claims are directed to a method of organizing human activity, including “managing personal behavior or relationships or interactions between people.” Ans. 7 (emphasis omitted).5 Appellant does not challenge the Examiner’s determination that the claims are directed to a 4 Appellant argues claims 1, 4, 5, 8–10, 13, 16–18, 21, and 23–26 as a group. Appeal Br. 6–10. We select independent claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). 5 The Examiner also determines the claims recite a mental process, but we do not rely on this part of the Examiner’s determinations. Ans. 7–8. Consequently, we need not address Appellant’s Reply arguments addressing the Examiner’s mental process determination. See Reply Br. 1–2. Appeal 2019-006994 Application 14/105,016 7 method of organizing human activity. See Appeal Br., passim; Reply Br., passim. We agree with the Examiner that claim 1 recites a method of organizing human activity. Under the broadest reasonable interpretation, claim 1 recites a fundamental economic practice, which is a method of organizing human activity. More specifically, claim 1 recites a fundamental economic practice because the following limitations of claim 1 broadly describe modifying a transportation resource operation schedule based on detecting inconvenient traveler experiences: analyzing . . . a record of a movement of a traveler through a transportation network, wherein the record includes historical data related to the movement of the traveler through the transportation network; detecting . . . a traveler displacement pattern indicative of a potential inconvenience during a journey of the traveler through the transportation network, wherein . . . does not receive an origin and a destination from the traveler, and wherein a sequence of locations of the traveler is tracked during a time period, and the travel displacement pattern is derived from the sequence; verifying a transportation network status corresponding to the potential inconvenience, wherein verifying the transport network status includes querying . . . regarding the transportation network status corresponding to the potential inconvenience; validating an inferred inconvenience based on the potential inconvenience and the transportation network status, wherein the validating the inferred inconvenience includes analyzing the movement of the traveler before and after the potential inconvenience, and wherein the validating the inferred inconvenience includes comparing the potential inconvenience to a threshold Appeal 2019-006994 Application 14/105,016 8 number of occurrences of the potential inconvenience during a time interval; and responsive to validating the inferred inconvenience, causing, by . . . [an] instruction derived from the validating the inferred inconvenience, a modification to at least one transportation resource in the transportation network based upon the validation of the inferred inconvenience, wherein the at least one transportation resource modified corresponding to the time interval, and wherein modifying the transportation network comprises modifying a transportation resource operation schedule. These recitations of claim 1, under their broadest reasonable interpretation, include analyzing traveler movement, detecting a potential inconvenience for a traveler, determining that the inconvenient experience did, in fact, occur, and modifying a transportation resource operation schedule accordingly. See Spec. ¶¶ 10 (“a method for automatically inferring inconvenient experiences encountered by a traveler during a journey”), 12 (“The knowledge inferred . . . may provide valuable information that may be utilized to optimize a multi-modal transport network. For example, the information may be applied to reduce the number of missed connections or to reduce long waiting times.”). In other words, the claim essentially recites changing a transportation schedule based on perceived traveler inconveniences, which is a known business activity and commercial interaction—one of certain methods of organizing human activity identified in the Guidance, and, therefore, an abstract idea. See Revised Guidance (Revised Step 2A, Prong One), 84 Fed. Reg. at 52 (describing an abstract idea category of “[c]ertain methods of organizing human activity—fundamental economic principles or practices . . .; commercial or legal interactions” (emphasis added)). Such activities are Appeal 2019-006994 Application 14/105,016 9 squarely within the realm of abstract ideas. See, e.g., In re Jobin, No. 2020- 1067 (Fed. Cir. May 8, 2020) (nonprecedential) (determining an application “directed to the collection, organization, grouping, and storage of data using techniques such as conducting a survey or crowdsourcing” is directed to a method of organizing human activity and therefore abstract). In light of our own analysis above, we determine that claim 1 recites a method of organizing human activity, and thus, an abstract idea. See Revised Guidance, 84 Fed. Reg. at 52. Step 2A, Prong 2 (Integration into a Practical Application) Under the Guidance, we now must determine if additional elements in the claims integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).6 We discern no additional element (or combination of elements) recited in Appellant’s representative claim 1 that integrates the judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong 2”). For example, Appellant’s claimed additional elements (e.g., a processing device, sensor, and a machine-readable instruction) (1) do not improve the functioning of a computer or other technology; (2) are not applied with any particular machine (except for a generic computer); (3) do not effect a transformation of a particular article to a different state; and (4) are not applied in any meaningful way beyond generally linking the use of 6 We acknowledge that some of the considerations at Step 2A, Prong 2 may be evaluated under Step 2 of Alice (Step 2B of the Guidance). For purposes of maintaining consistent treatment within the Office, we evaluate them under Step 1 of Alice (Step 2A of the Guidance). See Revised Guidance, 84 Fed. Reg. at 55 n.25, 27–32. Appeal 2019-006994 Application 14/105,016 10 the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP §§ 2106.05(a)–(c), (e)–(h). Instead, these limitations merely serve to narrow the recited abstract idea using generic computer components, which cannot impart patent-eligibility. See Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (A computer “employed only for its most basic function . . . does not impose meaningful limits on the scope of those claims.”). Appellant contends that “the inference of travel issues in a multimodal transportation system and modification of the system based on this inferred inconvenience of a traveler” integrates the abstract idea into a practical application. Appeal Br. 7. But this argument focuses on limitations that we determine are part of the judicial exception as discussed above; thus, these limitations are not “additional elements” that can impart patent eligibility to the claim. See, e.g., Appeal Br. 7–15; see also Revised Guidance, 84 Fed. Reg. at 55 n.24 (“USPTO guidance uses the term ‘additional elements’ to refer to claim features, limitations, and/or steps that are recited in the claim beyond the identified judicial exception.”). “It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). We, therefore, determine that there are no additional elements in claim 1 that integrate the abstract idea into a practical application. Appeal 2019-006994 Application 14/105,016 11 Step 2B (Inventive Concept) Because we determine that the claims are directed to an abstract idea, we next consider whether the claims include additional limitations such that the claims amount to significantly more than the abstract idea. Appellant contends that the Final Action fails to show that the additional elements were well-understood, routine, and conventional in the field by failing to follow the Office’s “Berkheimer Memorandum” (Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (April 19, 2018)). Appeal Br. 8–9. But in the Answer, the Examiner finds, and we agree, that the additional elements were well-understood, routine, and conventional in the field, for example, as supported by the Specification as follows: Examiner notes paragraphs [0015] [0016] and [0038]–[0044]. In the noted disclosure, the Specification provides listings of generic computing systems, e.g., a general computing platform including exemplary servers, network configurations and various processor configuration which are identified as capable and interchangeable for performing the disclosed processes. The disclosure does not identify any particular modifications to the underlying hardware elements required to perform the inventive methods and functions. With respect to the GPS and cellular telephone recitations of claims 23 and 25, Examiner directs the PTAB’s attention to paragraph [0028], which indicates that the location information for the traveler can be received from a standard GPS-enabled mobile device or telephone. Ans. 12–13; see also id. at 14–15 (citing relevant cases as supporting the same finding). Appellant does not contest these findings in its Reply Brief, and thus, Appellant’s Berkheimer challenge in the Appeal Brief is Appeal 2019-006994 Application 14/105,016 12 unpersuasive because we agree with the Examiner’s findings that the additional elements are well-understood, routine, and conventional. Moreover, as we explained above, the additional limitations, individually and as an ordered combination, merely narrow the recited abstract ideas using generic computer components. Accordingly, we determine there are no additional limitations that cause the claims to amount to significantly more than the abstract idea. Thus, we determine no element or combination of elements recited in claim 1 contains any “inventive concept” or adds anything “significantly more” to transform the abstract concept into a patent-eligible application. Accordingly, we sustain the Examiner’s rejection of claims 1, 4, 5, 8–10, 13, 16–18, 21, and 23–26, which Appellant argues as a group, under 35 U.S.C. § 101 as being directed to non-statutory subject matter in light of Alice, its progeny, and the Guidance. See supra n.2. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 5, 8– 10, 13, 16– 18, 21, 23– 26 101 Eligibility 1, 4, 5, 8– 10, 13, 16–18, 21, 23–26 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation