Mario Vela et al.Download PDFPatent Trials and Appeals BoardAug 19, 201913656856 - (D) (P.T.A.B. Aug. 19, 2019) 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. 13/656,856 10/22/2012 Mario Vela 275937 7391 23460 7590 08/19/2019 LEYDIG VOIT & MAYER, LTD TWO PRUDENTIAL PLAZA, SUITE 4900 180 NORTH STETSON AVENUE CHICAGO, IL 60601-6731 EXAMINER ROBINSON, TERRELL M ART UNIT PAPER NUMBER 2618 NOTIFICATION DATE DELIVERY MODE 08/19/2019 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): Chgpatent@leydig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte MARIO VELA, MICHAEL SHANNON IRIZARRY, and NAROTHUM SAXENA ________________ Appeal 2017-009796 Application 13/656,856 Technology Center 2600 ________________ Before JEREMY J. CURCURI, JUSTIN BUSCH, and PHILLIP A. BENNETT, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge JEREMY J. CURCURI. Opinion Dissenting filed by Administrative Patent Judge JUSTIN BUSCH. CURCURI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–20. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We heard the appeal on May 14, 2019. Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Final Act. 9–12. We reverse. Appeal 2017-009796 Application 13/656,856 2 STATEMENT OF THE CASE Appellants’ invention relates to “maintaining infrastructure components supporting data communications in mobile wireless networks.” Spec. ¶ 1. Claim 1 is illustrative and reproduced below: 1. A method for rendering, by a computerized mobile wireless data network performance parameter forecasting system, a forecast for a mobile wireless network performance parameter, the method comprising the steps of: acquiring, via a communications network infrastructure for the mobile wireless network, a raw data point set containing a series of data point values for the mobile wireless network parameter; correcting, by the computerized mobile wireless data network performance parameter forecasting system, the raw data point set, the correcting comprising a set of sub-steps, executed by the computerized forecasting system, of: performing a first linear regression on the raw data point set to render an initial best fit line, calculating a current series of data point residuals based upon: a current best fit line, the current best fit line being in a first instance the initial best fit line, and a current series of data point values, the current series of data point values being in a first instance the raw data point set, decomposing the current series of data point residuals into a current set of seasonal data point residual subsets, performing a boxplot analysis on the current set of seasonal data point residual subsets to identify individual anomalous point residuals to render a current set of anomalous data point residuals, correcting the current set of anomalous data point residuals to render a corrected data point residual set, and applying the corrected data point residual set to the current best fit line to render a current corrected data point set; and Appeal 2017-009796 Application 13/656,856 3 applying the current corrected data point set to a forecast model to render a forecast for the mobile wireless network performance parameter. PRINCIPLES OF LAW We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). ANALYSIS We are persuaded by Appellants’ arguments that the Examiner has not established a prima facie case for patent ineligibility under 35 U.S.C. § 101. The Examiner determined that: Claims 1–20 are directed to the abstract idea of correcting a data point set using mathematical techniques (Step 2A). The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to mere instructions to implement the idea on a computer (claims 11–20), and (ii) recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry (claims 11–20, e.g., a set of instructions that can be executed to cause a machine to perform a set of operations) (Step 2B). It is noted that dependent claims 2–10 and 12–20 do not claim any additional elements beyond the abstract idea, indicating the claimed method is read on by a person performing the same Appeal 2017-009796 Application 13/656,856 4 steps of a mathematical algorithm, and therefore contain nothing more, significant or otherwise. Final Act. 9–10 The Examiner further determined that: With respect to claim 1, the method steps for creating the corrected forecast model involving the correction of the raw data point set merely amount to routine mathematical operations pertinent to one of ordinary skill, in addition to reciting the steps of applying this corrected data point set in which the method leads to no direct result or use of the corrected data set other than application to the forecast model. Although the claims disclose the rendering of a forecast this concept fails to result in some sort of visual output such as display to some type of interface or display for the user as rendering could essentially take place in memory or in a file and does not explicitly indicate displaying a final result based on some enhancement or modification provided in performing of the mathematical based process. In addition, the claim also lacks a further step or resulting process which makes use or applies the “mobile wireless network performance parameter” in some useful way. Claim 11 is similarly deficient. Final Act. 10; see also Ans. 5–22. 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, Appeal 2017-009796 Application 13/656,856 5 we first determine what concept the claim is “directed to.” See Alice, 573 U.S. 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 (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 India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by Appeal 2017-009796 Application 13/656,856 6 attempting to limit the use of the formula to a particular technological environment.” Id. at 191 (citing Benson and Flook); see also, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). 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 (citation omitted). “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. (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 PTO recently published revised guidance on the application of § 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019). 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 activity 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. 2019). Appeal 2017-009796 Application 13/656,856 7 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” 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 84 Fed. Reg. at 56. Are the claims patent-eligible? Step One Claim 1 is a method claim having several steps, which falls within the “process” category of 35 U.S.C. § 101. Claim 11 is a computer readable medium claim, which falls within the “manufacture” category of 35 U.S.C. § 101. Although claims 1 and 11 fall within the statutory categories, we must still determine whether the claim is directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S. at 217–18. Thus, we must determine whether the claims recite a judicial exception, and fail to integrate the exception into a practical application. See 84 Fed. Reg. at 54–55. If both elements are satisfied, the claim is directed to a judicial exception under the first step of the Alice/Mayo test. See id. Step 2A—Prong One Independent claim 1 is a method claim, which recites, in part, the following: “[i] acquiring, via a communications network infrastructure for the mobile wireless network, a raw data point set containing a series of data Appeal 2017-009796 Application 13/656,856 8 point values for the mobile wireless network parameter.” This step covers receiving data, and is thus an “observation,” which is an example of “concepts performed in the human mind.” Memorandum 84 Fed. Reg. at 52. This recitation is thus the abstract concept of “[m]ental processes.” Id. Independent claim 1 further recites: “[ii] correcting... the raw data point set, the correcting comprising a set of sub-steps, executed by the computerized forecasting system, of”: “[iii] performing a first linear regression on the raw data point set to render an initial best fit line,” “[iv] calculating a current series of data point residuals based upon”: “[v] a current best fit line, the current best fit line being in a first instance the initial best fit line,” and “[vi] a current series of data point values, the current series of data point values being in a first instance the raw data point set,” “[vii] decomposing the current series of data point residuals into a current set of seasonal data point residual subsets,” and “[viii] performing a boxplot analysis on the current set of seasonal data point residual subsets to identify individual anomalous point residuals to render a current set of anomalous data point residuals.” These steps cover linear regression together with subsequent additional mathematical calculations, and are thus a combination of “mathematical relationships, mathematical formulas or equations, mathematical calculations.” Memorandum 84 Fed. Reg. 52. These recitations are thus the abstract concept of “[m]athematical concepts.” Id. Independent claim 11 recites limitations similar to those discussed with respect to claim 1. Thus, claim 11 also recites an abstract idea. Appeal 2017-009796 Application 13/656,856 9 Step 2A—Prong Two Because claims 1 and 11 recite a judicial exception, we next determine if the claims recite additional elements that integrate the judicial exception into a practical application. In the “Background of the Invention” section, Appellants’ Specification discloses “[t]he increased volume of data communications presents a challenge for service providers who must ensure reliable mobile wireless service for most, if not all, users.” Spec. ¶ 2. Appellants’ Specification further discloses “[w]hen parts of the mobile wireless network infrastructure are unable to adequately support subscriber needs at particular locations in the network, such parts (e.g., cell sites or portions thereof) must be identified. Thereafter, the cause(s) of the identified performance failure need to be identified, and solutions are proposed.” Spec. ¶ 3. In the “Background of the Invention” section, Appellants’ Specification discloses the following needs: “identifying the cause of poor data transmission service and the remedy for the poor service is not a trivial endeavor. Several challenges to identifying anomalous data points are discussed below.” Spec. ¶ 5. Appellants’ Specification discloses “[a] first challenge, to conducting a meaningful analysis and proposing a beneficial long term response to identified problems/needs in a mobile wireless data network, is the massive volume of raw network performance (e.g., KPI) data acquired by various components of the mobile wireless network.” Spec. ¶ 6. Appellants’ Specification discloses “[a]nother challenge involves determining the relevance of individual data points acquired during a period of interest.” Spec. ¶ 7. Appellants’ Specification discloses “[y]et another challenge involves identification of performance data trends.” Spec. ¶ 8. Appeal 2017-009796 Application 13/656,856 10 Appellants’ Specification discloses the following solution: facilitating and performing operations for computer-automated identification and remediation of anomalous data points for acquired performance parameter (e.g., KPI) values for a mobile wireless data network, the remediated data point sets being used as input to a forecasting model rendering a forecast for a performance indicator/parameter relating to the mobile wireless data network. Spec. ¶ 9; see also Spec. ¶10 (“The method further includes correcting the raw data point set.”). With respect to correcting the raw data point set, claim 1 recites the following: “[ix] correcting the current set of anomalous data point residuals to render a corrected data point residual set,” “[x] applying the corrected data point residual set to the current best fit line to render a current corrected data point set,” and “[xi] applying the current corrected data point set to a forecast model to render a forecast for the mobile wireless network performance parameter.” We conclude these limitations integrate the recited judicial exception of a mathematical concept into a practical application. Under the guidance, a judicial exception may be integrated into a practical application where it provides “an improvement to . . . any other technology or technical field.” MPEP § 2106.05(a). Here, these additional limitations provide an improvement to the technical field of operating mobile networks by allowing network operators to better forecast potential network problems using corrected data sets. As explained in the Specification, the “ability to accurately forecast, with a satisfactory level of precision, data throughput demand at various physical points within a mobile wireless network at particular points in time ensures that proper resources are committed by a Appeal 2017-009796 Application 13/656,856 11 mobile network service provider to meet user needs.” Spec. ¶ 4. By correcting anomalous data and applying that corrected data to an improved forecast model, a network operator is better able to optimize resource utilization within the network. Put another way, correcting the data and applying the corrected data to the forecast model is not abstract in the same way as the other claim recitations. Moreover, these additional limitations also provide a “technological solution to a technological problem,” MPEP § 2106.05(a) because they recite a specific solution to the technical problem of anomalous data points and their deleterious effect on the forecast model and resultant network resource utilization. Independent claim 11 recites limitations similar to those discussed with respect to claim 1. Thus, claim 11 is also not directed to an abstract idea. Thus, independent claims 1 and 11 recite additional elements that integrate the judicial exception into a practical application. Accordingly, we are persuaded by Appellants’ arguments that: Contrary to the allegations of the final Office action (at page 4), the claimed invention does not merely render a calculated/transformed number (per Parker v. Flook and Gottschalk v. Benson). Rather, Appellants’ claimed invention is directed to an improved way of rendering a forecast for a mobile wireless network performance parameter by carrying out a database data point value set “cleansing” operation (the bulk of the recited combination of operations recited in claim 1) that changes/replaces values assigned to individual data points (i.e. rendering a “current corrected set of data points”) prior to performing the “applying” operation for rendering “a forecast for the mobile wireless network parameter.[”] App. Br. 9. Appeal 2017-009796 Application 13/656,856 12 Thus, we do not sustain the rejection of independent claims 1 and 11 under 35 U.S.C. § 101. Claims 2–10 and 12–20 depend from claims 1 and 11, respectively. We, therefore, also do not sustain the rejection of claims 2– 10 and 11–20 under 35 U.S.C. § 101 for the same reasons discussed with respect to independent claims 1 and 11. ORDER The Examiner’s decision rejecting claims 1–20 is reversed. REVERSED UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte MARIO VELA, MICHAEL SHANNON IRIZARRY, and NAROTHUM SAXENA ________________ Appeal 2017-009796 Application 13/656,856 Technology Center 2600 ________________ Before JEREMY J. CURCURI, JUSTIN BUSCH, and PHILLIP A. BENNETT, Administrative Patent Judges. BUSCH, Administrative Patent Judge, dissenting. I respectfully dissent from the Majority’s decision reversing the Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101 as being directed to ineligible subject matter without significantly more. According to the Field of the Invention section, the disclosed invention relates “to maintaining infrastructure components supporting data communications in mobile wireless networks.” Spec. ¶ 1. The Summary of the Invention section, however, explains that certain embodiments are used to facilitate and perform “operations for computer-automated identification and remediation of anomalous data points for acquired performance parameter (e.g., KPI) values for a mobile wireless data network, the remediated data point sets being used as input to a forecasting model rendering a forecast for a performance indicator/parameter relating to the” Appeal 2017-009796 Application 13/656,856 2 network. Spec. ¶ 9 (emphasis added). More specifically, the claimed embodiments relate to methods and systems for rendering “a forecast for a mobile wireless network performance parameter,” including obtaining a raw data point set and correcting the raw data point set. Spec. ¶ 10; Appeal Br. 21–25; see also Spec. ¶¶ 11 (describing the various sub-steps involved in correcting the raw data point set), 38 (explaining that boxplot and linear regression are “statistical methods”). The systems and methods then apply the corrected data point set to a forecast model to render a forecast for the performance parameter. Spec. ¶ 12; see also Spec. ¶ 51 (“It is noted that the forecasting system described herein can utilize any of a variety of known commercial forecasting engines to process the corrected data points.”). The Examiner rejects the claims as being “directed to the abstract idea of correcting a data point set using mathematical techniques,” without reciting additional elements sufficient to add significantly more to the abstract idea because the additional elements amount to instructions to apply the abstract idea on a computer. Final Act. 9. The Examiner determines the recited sub-steps for correcting the data set are routine mathematical operations and, notwithstanding the rendering of a forecast based on the corrected data, the claims do not recite using the forecast data in a useful way. Final Act. 10. The Examiner determines the dependent claims merely recite additional refinements to the abstract idea, which neither change the character of the independent claims nor add additional elements beyond the abstract idea. Final Act. 9–12. Appellants collectively argue the patent eligibility of independent claims 1 and 11. See, e.g., Appeal Br. 18 (“Independent claim 11 recites the above-discussed elements of claim 1. Therefore, Appellants request Appeal 2017-009796 Application 13/656,856 3 withdrawal of the previous rejection of independent claim 11 for at least the reasons set forth herein above regarding the rejection of independent claim 1.”). Accordingly, I select independent claim 1 as representative of the claims on appeal. See 37 C.F.R. § 41.37 (c)(iv) (2016). Claim 1 is reproduced in the Majority’s decision and again below, where I highlight the elements that recite an abstract idea. Appellants dispute the Examiner’s conclusion that the claims are directed to an abstract idea. App. Br. 7–19. In particular, Appellants argue the claims are eligible because the claim elements, taken as a whole, recite significantly more than the identified abstract idea of “correcting a data point set using mathematical techniques” because the claims recite a particular combination of elements that improves a particularly technology by overcoming a technological problem in a particular way. Appeal Br. 7, 11. Appellants argue the detailed set of steps for correcting the raw data recites a particular way of overcoming the technological problem rather than simply claiming the desired result of correcting the data. Appeal Br. 7, 11–13. Appellants argue data network technicians faced the technological problem of “identifying (either manually OR by computer) and correcting anomalous/irregular data point values” before rendering a forecast for a network parameter. Appeal Br. 7–8; see also Appeal Br. 9–10 (“Appellants’ claims recite a particular method that improves upon previous known technology by solving a technological problem relating to identifying anomalous data points in a mobile wireless network performance parameter database”), 11–13. Appellants assert the claims do not simply calculate and render a number, but instead perform “a database data point value set ‘cleansing’ operation . . . that changes/replaces values assigned to individual Appeal 2017-009796 Application 13/656,856 4 data points . . . prior to performing the ‘applying’ operation for rendering ‘a forecast model for the mobile wireless network performance parameter.[’]” Appeal Br. 9. Appellants argue the claims recite that each of the mathematical techniques is performed in the context of correcting the raw data and rendering a forecast based on the corrected data. Appeal Br. 13. Appellants argue, contrary to the Examiner’s determination that the claims fail to recite using the network parameter or corrected data in a useful way, the claims recite outputting a corrected data point set and a forecast for a network parameter. Appeal Br. 13. Appellants argue the “improved forecast is valuable to mobile wireless network maintenance and upgrade planning operations.” Appeal Br. 13. Appellants do not dispute that their claims are directed to an abstract idea, contending only that the claims add significantly more to the abstract idea. However, because our framework for analyzing eligibility under 35 U.S.C. § 101 has changed since Appellants filed their Briefs, I address each step under our new guidance, as explained herein. As the Majority notes, the Supreme Court’s two-step framework guides patent eligibility analysis under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). As also set forth by the Majority, the Office recently published revised guidance for evaluating subject matter eligibility under 35 U.S.C. § 101, specifically with respect to applying the Alice framework. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). If a claim falls within one of the statutory categories of patent eligibility (i.e., a process, machine, manufacture, or composition of matter), we determine whether the claim is directed to one of the judicially Appeal 2017-009796 Application 13/656,856 5 recognized exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of our inquiry, 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). The Guidance directs us to address this inquiry using two prongs of analysis: (i) does the claim recite a judicial exception (e.g., an abstract idea), and (ii) if so, is the judicial exception integrated into a practical application. 84 Fed. Reg. at 54. Under the Guidance, if the judicial exception is integrated into a practical application, the claim is patent eligible under § 101. 84 Fed. Reg. at 54–55. If the claim is directed to a judicial exception (i.e., the claim both recites a judicial exception and fails to integrate the exception into a practical application), we next determine whether the claim provides an inventive concept, which includes determining whether any element, or combination of elements, amounts to significantly more than the judicial exception. Alice, 573 U.S. at 217; 84 Fed. Reg. at 56. Here, I conclude that the claims recite an abstract idea of a mathematical concept. Notably, Appellants’ claims are not directed to maintaining infrastructure components. Rather, Appellants’ claims are directed to correcting a data set and using the corrected data in a forecast model. Although the preamble is not dispositive with respect to characterizing the subject matter to which claims are directed, the preamble, which recites “[a] method for rendering . . . a forecast,” supports this characterization. Appeal Br. 21. This also is consistent with how Appeal 2017-009796 Application 13/656,856 6 Appellants described the claimed embodiments of the invention. See Spec. ¶¶ 9–12. To correct the data and use the corrected data in a forecast model, the claims recite acquiring raw data, performing a series of statistical analyses on the raw data to generate corrected data, and applying the corrected data to a forecast model. Consistent with the Guidance and case law, I conclude the statistical analyses recited as sub-steps of the “correcting . . . the raw data point set” step are mathematical concepts (e.g., mathematical relationships or mathematical calculations)—i.e., an abstract idea. See 84 Fed. Reg. at 52; Digitech Image Techs., LLC v. Elec. for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (concluding a method that describes “a process of organizing information through mathematical correlations and is not tied to a specific structure or machine” is abstract); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (concluding claims for providing statistical analysis of investment data were directed to the abstract idea of “selecting certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis”); see also In re Grams, 888 F.2d 835, 837 n.1 (Fed. Cir. 1989) (“It is of no moment that the algorithm is not expressed in terms of a mathematical formula. Words used in a claim operating on data to solve a problem can serve the same purpose as a formula.”) Moreover, our reviewing court has noted that, in certain instances, there may be an overlap between an abstract idea within the mathematical concepts category and an abstract idea within the mental processes category. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (concluding that “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as Appeal 2017-009796 Application 13/656,856 7 essentially mental processes within the abstract-idea category”). Thus, I further conclude correcting a data set and using the corrected data in a forecast model also is a mental process (i.e., a concept performed in the human mind, such as, an observation, evaluation, judgment, and opinion)— i.e., an abstract idea. See 84 Fed. Reg. at 52; see also Content Extraction & Transmission v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (concluding the claimed method of processing information from various sources was directed to the abstract idea of “1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory”). If a claim, under its broadest reasonable interpretation, can be performed practically in the mind, but for the recitation of generic computer components, then it is still in the mental processes category. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[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.”); see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use of “computer” or “computer readable medium” does not make a claim otherwise directed to process that “can be performed in the human mind, or by a human using a pen and paper” patent eligible); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (explaining mental processes are not patentable); 84 Fed. Reg. at 52–53 nn.14–15. Notably, we analyze the claimed subject matter to determine whether the recited steps could be performed practically in the mind. Here, Appellants’ claims recite various mathematical relationships Appeal 2017-009796 Application 13/656,856 8 and statistical formulas that, as claimed, could be performed mentally. As explained in OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015), “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” Claim 1 is reproduced below and includes the following claim limitations that recite correcting a data set and using the corrected data in a forecast model, emphasized in italics. 1. A method for rendering, by a computerized mobile wireless data network performance parameter forecasting system, a forecast for a mobile wireless network performance parameter, the method comprising the steps of: acquiring, via a communications network infrastructure for the mobile wireless network, a raw data point set containing a series of data point values for the mobile wireless network parameter; correcting, by the computerized mobile wireless data network performance parameter forecasting system, the raw data point set, the correcting comprising a set of sub-steps, executed by the computerized forecasting system, of: performing a first linear regression on the raw data point set to render an initial best fit line, calculating a current series of data point residuals based upon: a current best fit line, the current best fit line being in a first instance the initial best fit line, and a current series of data point values, the current series of data point values being in a first instance the raw data point set, decomposing the current series of data point residuals into a current set of seasonal data point residual subsets, performing a boxplot analysis on the current set of seasonal data point residual subsets to identify individual anomalous point residuals to render a current set of anomalous data point residuals, Appeal 2017-009796 Application 13/656,856 9 correcting the current set of anomalous data point residuals to render a corrected data point residual set, applying the corrected data point residual set to the current best fit line to render a current corrected data point set; and applying the current corrected data point set to a forecast model to render a forecast for the mobile wireless network performance parameter. More particularly, correcting a data set and using the corrected data in a forecast model comprises (i) acquiring the data (e.g., a raw data point set of values for a network parameter); (ii) correcting the raw data (i.e., the claimed sub-steps of performing linear regressions, calculating data residuals, decomposing the residuals, performing a boxplot analysis, correcting the anomalous residual to render a corrected residual set, and applying the corrected residuals to a current best fit line to render the corrected data set); and (iii) applying the corrected data to a forecast model. See Spec. ¶¶ 70–78 (describing calculating data point residuals using a best fit line and linear regression, decomposing the residuals, performing boxplot analyses, correcting the residuals, and applying the corrected residuals to a current best fit line as mathematical relationships and statistical analysis). Because the claim recites a judicial exception, I next analyze whether the claim integrates the judicial exception into a practical application. 84 Fed. Reg. at 54. To determine whether the judicial exception is integrated into a practical application, we identify whether there are “any additional elements recited in the claim beyond the judicial exception(s)” and evaluate those additional elements to determine whether they integrate the judicial exception into a recognized practical application. 84 Fed. Reg. at 54–55 (emphasis added); see also Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018). Appeal 2017-009796 Application 13/656,856 10 Here, I would find the additional limitations do not integrate the judicial exception into a practical application. Similarly, the additional limitations recited in the dependent claims fail to integrate the judicial exception into a practical application. More particularly, the claims do not recite: (i) an improvement to the functionality of a computer or other technology or technical field (see MPEP § 2106.05(a)); (ii) use a “particular machine” to apply or use the judicial exception (see MPEP § 2106.05(b)); (iii) a particular transformation of an article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other meaningful limitation (see MPEP § 2106.05(e)). See also 84 Fed. Reg. at 55. Both the “computerized mobile wireless data network performance parameter forecasting system” and the “communications network infrastructure” are generic computer elements recited at a high level of generality. The Specification’s Background of the Invention section identifies challenges to correcting data sets, including the “massive volume of raw” data and “determining the relevance of individual data points acquired during a period of interest.” Spec. ¶¶ 6–7. However, “the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.” Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012); see also OIP Techs., 788 F. 3d at 1363 (explaining that “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible” (citing Alice, 573 U.S. at 224 (“use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions” is not an inventive concept)). Similarly, although claims 9 and 19 narrow the component whose Appeal 2017-009796 Application 13/656,856 11 throughput is being measured from an extremely broad “mobile wireless data network component” to “a packet data serving node,” the component is still a generic computer component recited at a high level. Moreover, the claim recites the component merely as an element about which data is being gathered and does not recite using that component in any way that would integrate the abstract idea into a practical application. Accordingly, these limitations simply recite the use of generic computer components as tools to implement the abstract idea. 84 See Fed. Reg. at 55; MPEP § 2106.05(f). To the extent the acquiring data step and applying the corrected data to a forecast model may not be considered mathematical relationships, these steps amount to the type of extra-solution activities (i.e., in addition to the judicial exception) the courts have determined insufficient to transform judicially excepted subject matter into a patent-eligible application. See MPEP § 2106.05(g); see also Parker v. Flook, 437 U.S. 584, 590 (1978) (explaining “[t]he notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance”); Elec. Power, 830 F.3d at 1354 (recognizing “that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis”). Similarly, the additional limitations recited in dependent claims 8, 10, 18, and 20 merely identify the type of network performance parameter being measured, which is either part of the abstract idea or part of the pre-solution data gather activity. To the extent Appellants’ arguments that the claims recite significantly more than the abstract idea should be understood to assert the Appeal 2017-009796 Application 13/656,856 12 identified elements integrate the abstract idea into a practical application, see Appeal Br. 7–13, I disagree. More specifically, in my view, Appellants do not claim an improvement to the functionality of a computer, other technology, or other technical field (see MPEP § 2106.05(a)). Initially, I note the statistical analysis steps to which Appellants point are part of the abstract idea itself. As noted above, each of the statistical analysis steps are mathematical relationships and/or mental process steps that make up the abstract idea. Thus, there are no other additional elements recited in the independent claims to integrate the abstract idea into a practical application. See 84 Fed. Reg. at 54–55. Furthermore, dependent claims 2 through 7 and 12 through 17 simply recite additional mathematical techniques or statistical analysis steps that narrow the abstract idea, but still are part of the abstract idea of correcting data using mathematical relationships and applying the corrected data to a forecast model. Moreover, to the extent Appellants argue the claims provide a solution to the problem of maintaining and modifying network infrastructure components or configurations, I disagree. Although it may be possible to use the forecast to make infrastructure changes, the claims are not directed to making such changes. Rather, the claims are directed to data analysis. Appellants’ claimed invention allegedly solves the problem of identifying and correcting errors in raw data points so that data provided to any forecasting model is more accurate. Appeal Br. 21–25; see Appeal Br. 7–10. The most relevant portion of the Guidance instructs us that “improvements in the functioning of a computer, or an improvement to other technology or technical field” may be enough to integrate the abstract idea into a practical application. See 84 Fed. Reg. at 55. In my view, correcting data through Appeal 2017-009796 Application 13/656,856 13 mathematical relationships is not the type of technological solution, nor does it address the type of technical problem, the Guidance suggests are sufficient to integrate an abstract idea into a practical application. Even accepting that the “improved forecast is valuable,” Appeal Br. 13, this is not enough to integrate the abstract idea into a practical application. Cf. Univ. of Fla. Research Found., Inc. v. General Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019) (noting that although the claimed invention may “‘result in life altering consequences’ . . . is laudable, [] it does not render [the claims] any less abstract”). For at least the foregoing reasons, the claims do not integrate the judicial exception into a practical application. Because I would determine the claims are directed to an abstract idea or combination of abstract ideas, I analyze the claims under step two of Alice to determine if there are additional limitations that individually, or as an ordered combination, ensure the claims amount to “significantly more” than the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 72– 73, 77–79 (2012)). As stated in the Guidance, many of the considerations to determine whether the claims amount to “significantly more” under step two of the Alice framework are already considered as part of determining whether the judicial exception has been integrated into a practical application. 84 Fed. Reg. at 56. Thus, at this point of the analysis, I determine if the claims add a specific limitation, or combination of limitations, that is not well-understood, routine, conventional activity in the field, or simply appends well-understood, routine, conventional activities at a high level of generality. 84 Fed. Reg. at 56. Appeal 2017-009796 Application 13/656,856 14 As with the integration into a practical application analysis discussed above, an inventive concept “cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also 84 Fed. Reg. at 56; Alice, 573 U.S. at 217 (explaining that, after determining a claim is directed to a judicial exception, “we then ask, ‘[w]hat else is there in the claims before us?’” (emphasis added, brackets in original) (quoting Mayo, 566 U.S. at 78)). Instead, an “inventive concept” is furnished by an element or combination of elements that is recited in the claim in addition to the judicial exception and sufficient to ensure the claim as a whole amounts to significantly more than the judicial exception itself. Alice, 573 U.S. at 218–19 (citing Mayo, 566 U.S. at 72–73); see BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme Court in Alice “only assessed whether the claim limitations other than the invention’s use of the ineligible concept to which it was directed were well-understood, routine and conventional,” (emphasis added)). Appellants’ claims fail to recite specific additional limitations (or a combination of limitations) that are not well-understood, routine, and conventional. The statistical analysis steps are part of the recited abstract idea. The only additional elements (i.e., the “computerized mobile wireless data network performance parameter forecasting system,” the “communications network infrastructure,” the acquiring data step, and the applying the corrected data to a forecast model) are generic computer components recited at a high level of generality or basic computer functions, none of which recite limitations beyond what was well-understood, routine, Appeal 2017-009796 Application 13/656,856 15 and conventional in the art. See Berkheimer Memo1 § III.A.1; Spec. ¶¶ 39 (describing exemplary conventional communications network infrastructures) 51 (describing the forecasting system functionally and as being implemented on generic components and noting “that the forecasting system described herein can utilize any of a variety of known commercial forecasting engines to process the corrected data points”); see also Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (generic computer components such as an “interface,” “network,” and “database” fail to satisfy the inventive concept requirement). For the reasons discussed above, I am not persuaded the Examiner erred, and I would sustain the Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101. Accordingly, I respectfully dissent. 1 “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” at 3 (Apr. 19, 2018), available at https://www.uspto.gov/sites/default/files/documents/memo-berkheimer- 20180419.PDF (explaining that a specification that describes additional elements “in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can show that the elements are well understood, routine, and conventional). Copy with citationCopy as parenthetical citation