INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

May 29, 2020

14105016 - (D) (P.T.A.B. May. 29, 2020)

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.
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Application 14/105,016

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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
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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.
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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
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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)).
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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.
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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
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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
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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.
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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.

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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
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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