James Barry et al.Download PDFPatent Trials and Appeals BoardMay 7, 20212020005289 (P.T.A.B. May. 7, 2021) 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. 11/780,811 07/20/2007 James Barry 40125/02502 4728 30636 7590 05/07/2021 FAY KAPLUN & MARCIN, LLP 150 BROADWAY, SUITE 702 NEW YORK, NY 10038 EXAMINER NELSON, FREDA ANN ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 05/07/2021 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): mmarcin@fkmiplaw.com okaplun@fkmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAMES BARRY, JAMES COLE, JEFFREY DEVANEY, THOMAS O’HALLORAN, and MATT MARCELLA ____________ Appeal 2020-005289 Application 11/780,8111 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and BRUCE T. WIEDER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1–11 and 13–19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Passur Aerospace, Inc. (f/k/a Megadata Corporation). (Appeal Br. 2.) Appeal 2020-005289 Application 11/780,811 2 CLAIMED SUBJECT MATTER Appellants’ invention relates to a method and system for determining fuel pricing for aircraft. (Spec. ¶ 3.) Claims 1 and 11 are the independent claims on appeal. Claim 1 is illustrative. It recites: 1. A non-transitory computer-readable storage medium storing a set of instructions executable by a processor, the set of instructions being operable to: receive, from a radar in communication with the processor, an aircraft identifier corresponding to an arriving aircraft within range of the radar; retrieve information on the basis of the aircraft identifier, the information comprising a comparison between a predicted fuel requirement determined from at least one previous visit and an actual fuel purchase from the at least one previous visit; determine an attractiveness of an operator of the aircraft as a potential customer, based on at least the retrieved information, the attractiveness being decreased when the comparison indicates at least a predetermined disparity between the predicted fuel requirement and the actual fuel purchase; determine a suggested fuel price based on at least the attractiveness of the operator as a potential customer, wherein a suggested fuel price for an operator having a high attractiveness is lower than a suggested fuel price for an operator having a low attractiveness; and alerting the operator to a fuel price at a next destination airport for the aircraft. REJECTION Claims 1–11 and 13–19 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Appeal 2020-005289 Application 11/780,811 3 ANALYSIS “Whoever 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.” 35 U.S.C. § 101. Section 101, however, “contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). Alice applies a two-step framework, earlier set out in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (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. Under the two-step framework, it must first be determined if “the claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the claims are determined to be directed to a patent-ineligible concept, e.g., an abstract idea, then the second step of the framework is applied to determine if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Id. at 221 (internal quotation marks omitted) (citing Mayo, 566 U.S. at 72– 73, 79). With regard to step one of the Alice framework, we apply a “directed to” two-prong test to: 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 Appeal 2020-005289 Application 11/780,811 4 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,” i.e., whether the claim integrates the judicial exception into a practical application. See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”). Here, the Examiner determines that claim 1 recites certain methods of organizing human activity, including commercial or legal interactions. (Answer 4.) In particular, the Examiner finds that “Appellant’s specification describes that the invention is used to maximize fuel sale[s], [and] encourage customer[s] to bring repeat business.” (Id. (citing Spec. ¶¶ 7, 10, 26).) Appellant does not present an argument regarding prong one of step one under the Alice framework. Nonetheless, we undertake this analysis before considering Appellant’s arguments under prong two. Under step one of the Alice framework, we “look at the ‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). The “directed to” inquiry . . . cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon . . . . Rather, the “directed to” inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether “their character as a whole is directed to excluded subject matter.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). Appeal 2020-005289 Application 11/780,811 5 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In other words, the first step of the Alice framework “asks whether the focus of the claims is on the specific asserted improvement in [the relevant technology] or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Id. at 1335–36; see also 2019 Guidance at 54–55. The Specification provides evidence as to what the claimed invention is directed. In this case, the Specification discloses that the invention relates to a method and system for determining fuel pricing. (Spec., Title.) Claim 1 provides further evidence. Claim 1 recites “a set of instructions executable by a processor . . . to receive, from a radar . . . , an aircraft identifier,” “retrieve information on the basis of the aircraft identifier,” “determine an attractiveness of an operator of the aircraft as a potential customer,” “determine a suggested fuel price,” “alert[] the operator to a fuel price at a next destination.” The intrinsic evidence shows that claim 1 recites receiving data, retrieving data, analyzing data (determining an attractiveness of a customer and a fuel price), and transmitting data (alerting the operator). Receiving data, retrieving data, analyzing data, and transmitting data have been determined to be directed to an abstract idea. See, e.g., Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (treating as an abstract idea “1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data”), FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining “that the ‘realm of abstract ideas’ includes ‘collecting information, including when limited to particular Appeal 2020-005289 Application 11/780,811 6 content’” as well as analyzing and presenting information), OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1361–62 (Fed. Cir. 2015) (testing prices, gathering statistics about customer reactions, using that data to estimate outcomes, and automatically offering a new price determined to be directed to an abstract idea), Bridge & Post, Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 886–87 (Fed. Cir. 2019) (obtaining user information, analyzing the user information, and presenting customized information to the user based on the analyzed information determined to be directed to an abstract idea). Claim 1 does not recite how the radar communicates with the processor, how or from where information is retrieved on the basis of the aircraft identifier, how the attractiveness of the operator is determined, how the suggested fuel price is determined, or how the operator is alerted to a fuel price. Moreover, the recitations in claim 1 of identifying an aircraft and its operator, determining the attractiveness of the operator as a customer, and determining a suggest price based on at least the attractiveness of the operator, clearly recite commercial interactions including “advertising, marketing or sales activities or behaviors.” (See 2019 Guidance at 52; see also Answer 4.) In view of the foregoing, and with regard to prong one, we are not persuaded that the Examiner erred in determining that claim 1 recites elements of certain methods of organizing human activity. (See 2019 Guidance at 52.) Appeal 2020-005289 Application 11/780,811 7 Appellant argues that “claim 1 is directed to ‘significantly more’ and therefore is not directed to an abstract idea but an improvement to a computer implemented system.” (Appeal Br. 3–4.) We disagree.2 As an initial matter, we note that the limitations of claim 1 do not recite technological implementation details for any of the elements. As discussed above, claim 1 does not, e.g., recite how the radar communicates with the processor, how or from where information is retrieved on the basis of the aircraft identifier, how the attractiveness of the operator is determined, how the suggested fuel price is determined, or how the operator is alerted to a fuel price. “Indeed, the claim language here provides only a result- oriented solution, with insufficient detail for how a computer accomplishes it. Our law demands more.” Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017). Claim 1 is “focused on providing information . . . , not on improving computers or technology.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019). “Like Electric Power, the purported advance ‘is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions.’ We thus conclude that the claim[ is] directed to an abstract idea.” Id. at 1385 (citation omitted). In cases involving software innovations, such as we have here, the inquiry as to whether the claims are directed to an abstract idea “often turns 2 We acknowledge that some of these considerations could instead be evaluated under step two of the Alice framework. However, for purposes of maintaining consistent treatment within the USPTO, we evaluate them under step one. See 2019 Guidance. Appeal 2020-005289 Application 11/780,811 8 on whether the claims focus on ‘the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.’” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting Enfish, 822 F.3d at 1335–36). Here, the recited processor and radar are invoked merely as tools. The asserted improvement is to the data analyzed and sent, i.e., the fuel price determined and the fuel price sent to the operator. In short, “the focus of the claims is not a physical-realm improvement but an improvement in wholly abstract ideas––the selection and mathematical analysis of information, followed by reporting or display of the results.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). In the Reply Brief, Appellant argues for the first time in this appeal that “[t]he recitation of ‘receive, from a radar in communication with the processor, an aircraft identifier corresponding to an arriving aircraft within range of the radar’ means that claim 1 is required to take very specific input (‘aircraft identifier’) from a particular source (‘radar in communication with the processor’)” and that “[t]he recitation of ‘alerting the operator to a fuel price at a next destination airport for the aircraft’ incorporates a further practical application into the claimed subject matter.” (Reply Br. 4.) Appellants’ new arguments in the Reply Brief were not responsive to a new argument raised in the Examiner’s Answer. Under 37 CFR § 41.41(b)(2), we need not consider new arguments absent a showing of good cause. No showing was made. Nonetheless, we note that “[a] claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in Appeal 2020-005289 Application 11/780,811 9 order to effectuate a real-world benefit.” In re Mohapatra, 842 F. App’x 635, 638 (Fed. Cir. 2021). Moreover, “[a]s many cases make clear, even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am., Inc., 898 F.3d at 1168. The “character of [the] information simply invokes a separate category of abstract ideas.” Id. In short, we do not find Appellant’s new arguments persuasive. Additionally, we do not find any indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record that attributes an improvement in computer technology or functionality to the claimed invention or that otherwise indicates that the claimed invention “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 Guidance at 54–55.) Therefore, under prong one of the two prong test in the 2019 Guidance, claim 1 recites at least the abstract idea of certain methods of organizing human activity; and, under prong two, additional elements in claim 1 do not “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.” (See 2019 Guidance at 54.) As such, under step one of the Alice framework, claim 1 is directed to an abstract idea, and we move to step two. Appeal 2020-005289 Application 11/780,811 10 Step two of the Alice framework has been described “as a 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.’” Alice, 573 U.S. at 217–18 (brackets in original) (quoting Mayo, 566 U.S. at 72–73). Under step two, we examine, inter alia, whether an additional element or combination of elements “[a]dds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present.” (2019 Guidance at 56.) Taking the claim elements separately, the functions performed in claim 1 by the generic processor to receive data (from a radar), retrieve data, analyze data, and transmit data are purely conventional. Receiving data, retrieving/gathering data, analyzing data, and outputting results are well- understood, routine, and conventional functions previously known to the industry. See Elec. Power Grp., 830 F.3d at 1356 (The claims “do not include any requirement for performing the claimed functions of gathering, analyzing, and displaying in real time by use of anything but entirely conventional, generic technology. The claims therefore do not state an arguably inventive concept . . . .”); see also Versata Dev. Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (determining claims requiring “arranging, storing, retrieving, sorting, eliminating, determining” to “involve the normal, basic functions of a computer” and to be “conventional, routine, and well-known”), 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 Appeal 2020-005289 Application 11/780,811 11 ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming.”). Considered as an ordered combination, the generic processor (and radar) recited in claim 1 add nothing that is not already present when the limitations are considered separately. For example, claim 1 does not purport to improve the functioning of the processor or the radar themselves. Nor does it effect an improvement in any other technology or technical field. Instead, claim 1 amounts to nothing significantly more than an instruction to apply the abstract ideas using a generic processor performing routine processor functions. That is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26. We are not persuaded that the Examiner erred in rejecting claim 1. Claims 2–11 and 13–19 are not separately argued and fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION The Examiner’s rejection of claims 1–11 and 13–19 under 35 U.S.C. § 101 is affirmed. Specifically: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–11, 13–19 101 Eligibility 1–11, 13–19 Appeal 2020-005289 Application 11/780,811 12 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