Paul Salsberg

Patent Trials and Appeals Board

Jun 8, 2021

2021001393 (P.T.A.B. Jun. 8, 2021)

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.
15/361,469 11/27/2016 Paul Salsberg Salsberg Parking Conv 7706
142578 7590 06/08/2021
Shari Millar
6174 Agee St. #81
San Diego, CA 92122
EXAMINER
VILLECCO, JOHN M
ART UNIT PAPER NUMBER
2696
MAIL DATE DELIVERY MODE
06/08/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL SALSBERG
Appeal 2021-001393
Application 15/361,469
Technology Center 2600
Before THU A. DANG, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 3 and 6 are pending, stand rejected, are appealed by
Appellant,1, 2 and are the subject of our decision under 35 U.S.C. § 134(a).
See Final Act. 1.3 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 Paul Salsberg.
Appeal Br. 2.
2 Appellant’s claims 1, 2, and 15–49 were withdrawn from consideration.
See Election, filed Mar. 13, 2019. Appellant previously canceled claims 4,
5, and 7–14. See Amendment filed Feb. 12, 2020.
3 Throughout our decision we refer to Appellant’s Specification (“Spec.”)
filed Nov. 27, 2016 (claiming benefit of US 62/263,792 (filed Dec. 7,
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CLAIMED SUBJECT MATTER
The claimed subject matter, according to Appellant, relates generally
“to a parking space control method and a system, and more particularly, . . .
the present invention relate[s] to a parking space control method and system
with unmanned paired aerial vehicle (UAV)” or drone. Spec. ¶ 2; see Spec.
¶¶ 6–14; Abstract. Claim 3, reproduced below, is the sole pending
independent claim and is illustrative of the claimed subject matter:
3. A method for controlling a parking lot, comprising
the steps of:
a) inputting data so as to form inputted data;
b) image detecting analyzing with feature detection, key point
detector, and descriptor extractor algorithm operating on the inputted
data so as to form image detecting analyzed data;
c) extracting key points from the image detecting analyzed data
so as to form extracted key pointed data;
d) decision analyzing of the extracted key pointed data so
as to form decision analyzed data;
e) defining results and channeling analysis towards an
application in parking areas’ surveillance from the decision
analyzed data so as to form results; and
f) providing a drone;
wherein said step of inputting data includes inputting data
that is three images at a beginning of said decision analyzing step
when the drone is arriving at a waypoint during a monitoring
flight;
wherein said step of inputting data includes inputting data
that is two images if the drone is arriving at said waypoint for the
first time during said monitoring flight;

2015)); and Appeal Brief (“Appeal Br.”) filed July 21, 2020. We also refer
to the Examiner’s Final Office Action (“Final Act.”) mailed Apr. 3, 2020;
and Answer (“Ans.”) mailed Sept. 8, 2020.
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wherein the results include one of:
a) no differences detected between the three images, and
as such, a vehicle is not parked and the parking lot is empty;
b) difference detected between all of the three images, and
as such, the parking lot is either vacated or there is an arrival of
a new vehicle; and
c) differences detected between an original image, but not
between a current image and a previous image and as such, there
is an old vehicle that had been detected last time and still
occupies the parking lot, so thereby do one of issue a ticket and
note an update on duration of parking since registration;
wherein the original image is taken during a set-up flight
when the parking lot is empty, and as such, is used as a base state,
and as such, is considered a normal state of the parking lot with
no object of interest;
wherein the previous image is taken during a previous
flight of the drone for a waypoint of interest; and
wherein the current image is taken during a current flight
of the drone for the waypoint of interest.
Appeal Br. 16–17 (Claims App.).
REJECTIONS
1. The Examiner rejects claims 3 and 6 under 35 U.S.C. § 101 as
being directed to patent ineligible subject matter. See Final Act. 7–9.
2. The Examiner rejects claims 3 and 6 under 35 U.S.C. § 112(b)
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which the inventor regards as the invention. See Final
Act. 10–11.

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ANALYSIS
Subject Matter Eligibility—35 U.S.C. § 101
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision 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)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 77–80 (2012). “[F]or 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. The
framework requires us first to consider “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217.
If so, we then examine “the elements of [the] claim both individually and ‘as
an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Alice,
573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). That is, we examine the
claim for an “inventive concept,” “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 (alteration in original) (quoting Mayo, 566 U.S. at 72–
73).
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In determining whether a claim falls within an excluded category, 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).
Under this guidance, we must therefore ensure at step one that we articulate
what the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
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. (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 Patent Office has published revised guidance concerning this
framework and the application of § 101—USPTO’s 2019 Revised Patent
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Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).4 Under
this subject matter eligibility guidance in the MPEP, we first look to whether
the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people) (hereinafter
“Step 2A, prong 1”) (see MPEP § 2106.04); and
(2) additional elements that integrate the judicial exception into
a practical application (hereinafter “Step 2A, prong 2”) (see
MPEP §§ 2106.04; 2106.04(d); 2106.05(a)–(c), (e)–(h)).
See MPEP §§ 2106.04, 2106.05; 2019 Revised Guidance, 84 Fed. Reg. at
51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under 35 U.S.C. § 101. See 2019 Revised Guidance, 84 Fed. Reg. at
54.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate

4 The Office’s current eligibility guidance may also be found in the most
recent update to the Manual of Patent Examination Procedure (MPEP),
Ninth Edition, Revision 10.2019 (revised June 2020). See MPEP §§ 2103
through 2106.07(c).
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whether the claim provides an inventive concept. See 2019 Revised
Guidance, 84 Fed. Reg. at 56; see also Alice, 573 U.S. at 217–18.
For example, we 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.5
See MPEP § 2106.05. With these principles in mind, we turn to the merits
of the § 101 rejection.
The Examiner rejects Appellant’s claims 3 and 6 as being directed to
patent-ineligible subject matter. See Final Act. 7–9; Ans. 3–5. Appellant
does not separately argue the claims with specificity and, instead, argues the
claims together for this rejection. See Appeal Br. 5–12. Accordingly, we
address the Examiner’s rejection of independent claim 3 and the claim not
separately argued by Appellant (claim 6) as a group based on claim 3, as
permitted by 37 C.F.R. § 41.37(c)(1)(iv)(2018).
Statutory Subject Matter
Claim 3 recites a “method” (supra). Appellant’s “method” includes a
drone capable of acquiring image data. Appeal Br. 16 (Claims App.) (claim
3). Accordingly, we analyze each of Appellant’s claim 3 as a process
performed using drone (a machine that acquires images (Spec. ¶ 6)), which
is a statutory category of invention (subject matter) (USPTO’s Step 1).

5 Items (3) and (4) are collectively referred to as “Step 2B” hereinafter and
in the 2019 Revised Guidance.
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Abstract Idea
The Examiner rejects Appellant’s claim 3 as being directed to patent-
ineligible subject matter. See Final Act. 7–9; Ans. 3–5. Specifically, the
Examiner concludes claim 3 (as well as claim 6) is “directed to an abstract
idea without significantly more” (Final Act. 7) because claim 3,
under its broadest reasonable interpretation, covers performance
of the [recited] limitation[s] in the mind but for the recitation of
generic computer components. That is, other than reciting “an
application,” and a “drone” nothing in the claim element[s]
preclude[] the step[s] from practically being performed in the
mind. For example, but for the “application” and “drone”
language, “image detecting analyzing[,”] “extracting[,”]
“analyzing[,”] and “defining results and channeling” in the
context of this claim encompass[] the user manually analyzing
each image, manually extracting key points, manually analyzing
decisions, and manually defining results and channeling results.
If a claim limitation, under its broadest reasonable interpretation,
covers performance of the limitation in the mind but for the
recitation of generic computer components, then it falls within
the “Mental Processes” grouping of abstract ideas.
Final Act 8; see Ans. 3–5.
Appellant contends the Examiner erred in rejecting the claims as
being directed to patent-ineligible subject matter. See Appeal Br. 5–12.
Specifically, Appellant contends, inter alia, that the claims are not directed
to an abstract idea because the recitation of a “drone” imparts structure and
the claim, therefore, cannot be directed to abstract mental steps or activity—
“[t]he drone is the mechanism by which the steps of the method of the
present invention are carried out and imposes meaningful limits on the
claims” (Appeal Br. 8 (emphasis omitted)). See Appeal Br. 6–8.
For the reasons discussed below, we conclude Appellant’s claim 3 (as
well as claim 6) recites abstract ideas, and these abstract ideas are not
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integrated into a practical application, nor do they include an inventive
concept. In view of the 2019 Revised Guidance, we provide our reasoning
as follows.
Claim 3 (Appeal Br. 16–17 (Claims App.)) as set forth above, and
delineated by the Examiner (see Final Act. 7–9; Ans. 3–5) recites a “method
for controlling a parking lot” (see Spec. ¶ 6) that uses a paired unmanned
aerial vehicle (UAV) or “drone” (see Spec. ¶¶ 2, 6, 7) to follow a predefined
path and acquire images of a parking lot area (see Spec. ¶ 9). The drone
provides the image data to an algorithm that processes and analyzes the
image data. See Spec. ¶¶ 7, 9, 24.
The functionality (steps or processes) of the method include:
“inputting data” (see Spec. ¶¶ 18, 19 ), “image detecting analyzing with
feature detection, key point detector, and descriptor extractor algorithm
operating on the inputted data so as to form image detecting analyzed data”
(i.e., image analysis using an undisclosed algorithm) (see Spec. ¶¶ 7, 18, 19),
“extracting key points . . . to form extracted key pointed data” (i.e.,
extracting information (key point data) from the analyzed data) (see Spec.
¶ 19), “decision analyzing of the extracted key pointed data so as to form
decision analyzed data (i.e., analyzing extracted (key point) data) (see Spec.
¶ 19), and “defining results and channeling analysis towards an application .
. . to form results” (i.e., determining results of the analysis) (see Spec. ¶ 19).
In summary, claim 3 recites a process of inputting image data from a drone,
analyzing the input image data (performing image analysis) and determining
results from the image analysis.
Appellant contends that the process must use a drone, which gathers
specific information, and the drone thus provides “meaningful limits on the
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claims” (Appeal Br. 8). See Appeal Br. 6–8. In other words, Appellant
contends the disputed methods steps are not capable of being performed
entirely by the human mind and, therefore, are not abstract mental processes.
Id. When interpreted in conjunction with the Specification (in particular,
Spec. ¶¶ 7, 18, and 19) that merely describes performing generalized image
analysis on input image data, however, the process of claim 3 merely recites
general image analysis (as discussed below) for collecting and analyzing
image data, extracting information from the analyzed image data, analyzing
the extracted information and determining results from the analysis.
The steps of performing image analysis on input image data by
collecting and analyzing image data, extracting information therefrom, and
analyzing the extracted information to determine results recite mental
processes (see 2019 Revised Guidance, 84 Fed. Reg. at 52, 53 (“[m]ental
processes” are “concepts performed in the human mind (including an
observation, evaluation, judgment, opinion)”)). Apart from extra-solution
activity (using a drone to acquire input image data) (discussed further
below), each of the limitations of claim 3 describes a mental process of
collecting and analyzing information—“‘collecting information, analyzing
it, and [determining] results of the collection and analysis,’ where the data
analysis steps are recited at a high level of generality such that they could
practically be performed in the human mind.” October 2019 Update:
Subject Matter Eligibility 7, available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df (hereinafter “October 2019 Update”).
A person can practically perform the functions of claim 3 mentally, or
by using pen and paper. Nowhere does Appellant point to specific claim
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limitations that could not be performed alternatively as a mental process.
For instance, one could mentally perform analyzing image data to extract
particular information (the second and third steps (steps “b” and “c”) of
claim 3) by manually/physically reviewing images. This process can readily
be performed mentally by a person. See Spec. ¶¶ 7, 18, and 19.
To the Extent Appellant contends (see Appeal Br. 6–8) that claim 3
uses computer technology (software, algorithms, and/or an application) to
perform the analysis (supra) (see e.g., Spec. ¶¶ 7, 10, 12), we note that claim
3 does not explicitly recite any such technology. At most, the claim recites
“channeling analysis toward an application,” but the application is not
detailed in any manner.
We emphasize that the 2019 Revised Guidance explains that “mental
processes” include acts that people can perform in their minds or using pen
and paper, even if the claim recites that a generic computer component
performs the acts. See 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14 (“If
a claim, under its broadest reasonable interpretation, covers performance in
the mind but for the recitation of generic computer components, then it is
still in the mental processes category unless the claim cannot practically be
performed in the mind.”). Because each of the limitations discussed above
encompasses acts that people can perform in their minds or using pen and
paper, claim 3 recites mental processes.
Appellant’s arguments have not persuaded us otherwise. See SAP
America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018)
(“selecting certain information, analyzing it using mathematical techniques,
and reporting or displaying the results of the analysis” are abstract concepts
similar to the claims in Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350
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(Fed. Cir. 2016)); Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat’l Ass’n, 776 F.3d 1343, 1345, 1347 (Fed. Cir. 2014) (finding the
“claims generally recite . . . extracting data [and] recognizing specific
information from the extracted data” and that the “claims are drawn to the
basic concept of data recognition”).
In summary, we conclude Appellant’s claim 3 recites a judicial
exception (USPTO’s Step 2A, Prong 1; see 2019 Revised Guidance) because
claim 3 recites a process of analyzing image data that consists of mental
processes that can be practically performed in the human mind (or utilizing
pen and paper) including observation, evaluation, or judgment. See 2019
Revised Guidance, 84 Fed. Reg. at 52, 53 (listing “[m]ental processes—
concepts performed in the human mind (including an observation,
evaluation, judgment, opinion)” as some of the “enumerated groupings of
abstract ideas” (footnote omitted)).
Practical Application
Having determined that claim 3 recites an abstract idea, we next
determine, under Step 2A, Prong 2 of the 2019 Revised Guidance, whether
claim 3 (and claim 6) are directed to that abstract idea, or whether the claims
integrate the abstract idea into a practical application of that abstract idea.
See 2019 Revised Guidance, 84 Fed. Reg. at 54. In doing so, we evaluate
the claim as a whole to determine whether the claim “integrate[s] the
[abstract idea] into a practical application, using one or more of the
considerations laid out by the Supreme Court and the Federal Circuit.” 2019
Revised Guidance, 84 Fed. Reg. at 55; see also October 2019 Update 12
(discussing the practical application analysis). That is, we consider any
additional elements recited in the claim along with the limitations that recite
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an abstract idea to determine whether the claim integrates the abstract idea
into a practical application. See October 2019 Update 12.
Claim 3 recites an additional element beyond the process of analyzing
images and extracting information to determine results (the image analysis
process)—the additional element is the “drone” (Appeal Br. 16 (Claims
App.)). Although the image analysis process of claim 3 implicates un-
recited (unclaimed) computing devices that perform the functionality of
image analysis and data extraction to “defin[e] results and channel[] analysis
toward an application in parking areas’ surveillance” (Appeal Br. 16 (Claims
App.), the computing devices are not actually recited in the claim. The
claim recites only the image analysis process and the drone.
The drone, however, does not perform any of the analysis. Instead,
claim 3 recites two “wherein” clauses that specify what the “inputted data”
(input during the “inputting” step (step “a”)) include: “inputting data
includes inputting data that is three images . . . when the drone is arriving at
a waypoint during a monitoring flight” and “inputting data that is two
images if the drone is arriving at said waypoint for the first time during said
monitoring flight.” Appeal Br. 16 (Claims App.). Even if we construe the
claim such that the drone performs the functionality of acquiring the image
data, image data gathering or collection does not amount to “meaningful
limits on the claims” as asserted by Appellant. Appeal Br. 8.
Instead, image gathering by the drone merely amounts to data
gathering, and such data-gathering steps are a classic example of
insignificant extra-solution activity. See, e.g., In re Bilski, 545 F.3d 943,
963 (Fed. Cir. 2008) (en banc), aff’d sub nom, Bilski, 561 U.S. 593
(characterizing data gathering steps as insignificant extra-solution activity).
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With this guidance in mind, we find the image gathering steps performed by
the drone to be insignificant extra-solution activity. See 2019 Revised
Guidance, 84 Fed. Reg. at 55 n.31; see also MPEP § 2106.05(g);
PerkinElmer, Inc. v. Intema Ltd., 496 Fed.Appx. 65, 73 (Fed. Cir. 2012)
(“the data-gathering steps are conventional and obvious extra-solution
activity that cannot save the claims.”) (quoting Parker v. Flook, 437 U.S.
584, 590 (1978) (“The 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.”).
Additionally, Appellant’s Specification does not describe the
additional element—the drone—in any detail. Instead, the Specification
describes the unmanned aerial vehicle (UAV) or drone and its image
acquisition functionality at a high level of generality. For example, the
written description does not describe the structure of the UAV, its image
processing (acquisition) circuitry, or the process by which it acquires the
images, but instead describes the UAV performing standard UAV functions
with an included camera—the “UAV containing an on-board (4k) digital
camera that follows a predefined path and covers the area of the parking lot
at regular intervals at a specific altitude to get a birds-eye view of the lot”
(Spec. ¶ 9), and
[t]he image source 178 includes an image capture device, such
as, the UAV camera 150, and at least one camera installed on the
UAV that captures image and video data from the parking area
and/or from parking area of interest. The UAV flies at regular
intervals along a predefined path that covers the area.
(Spec. ¶ 43).
In summary, Appellant’s written description describes the additional
element (the drone) as standard UAV that captures image and video data,
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i.e., standard electronic (computer) components. Providing “simply generic
descriptions of well-known computer components” does not show a
technical improvement (discussed infra) or integrate the abstract idea into a
practical application where, as here, the Appellant “makes no claim that it
invented any of those components or their basic functions, nor does it
suggest that those components, at that level of generality, were unknown in
the art.” Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266,
1270 (Fed. Cir. 2016). Appellant’s written description does not portray the
additional element (the drone) as anything but standard electronic equipment
or computer components. Nor does Appellant’s written description portray
these components as operating in a new way. Instead, as explained by the
Examiner, the written description depicts the additional element (the drone)
as a generic component operating in its accustomed manner. See Final Act.
8–9; Ans. 4–5.
Accordingly, Appellant’s written description shows that the additional
element (the drone) is generic. See Hybritech Inc. v. Monoclonal Antibodies
Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (“[A] patent need not teach, and
preferably omits, what is well known in the art.”); Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1315, 1331 (Fed. Cir. 2017) (“The
claimed mobile interface is so lacking in implementation details that it
amounts to merely a generic component (software, hardware, or firmware)
that permits the performance of the abstract idea, i.e., to retrieve the user-
specific resources.”).
As previously discussed, Appellant contends that the image analysis
process must use the drone, the drone gathers specific information and,
therefore, the drone provides “meaningful limits on the claims” (Appeal Br.
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8). See Appeal Br. 6–8. We, however, disagree with Appellant’s
contentions. Appellant’s additional element (the drone) does not apply or
use the judicial exception (the image analysis process) in a manner that
imposes a meaningful limit on the judicial exception, such that it is more
than a drafting effort designed to monopolize the exception. See Alice, 573
U.S. at 221–24 (citing Mayo, 566 U.S. at 78–85). Rather, Appellant’s
claims recite generic elements that are utilized as tools to carry out image
data gathering or collection. The drone does not perform the other recited
functionality (image data analysis and extraction of information to determine
results) (as discussed supra). Utilizing generic elements (computer
components) as tools to perform common data collection, and facilitate
image analysis functions that can be mental processes (abstract ideas) does
not impose a meaningful limit on the abstract idea. See MPEP § 2106.05(f);
see also Alice, 573 U.S. at 223 (finding “if [the] recitation of a computer
amounts to a mere instruction to implement an abstract idea on a computer,
that addition cannot impart patent eligibility”) (internal quotation marks,
alteration, and citations omitted).
The additional element (drone) in claim 3, whether taken alone or in
the context of the claims as a whole, does not integrate the judicial exception
into a practical application. In summary, “the focus of the claims is not on
such an improvement in computers as tools, but on certain independently
abstract ideas that use computers as tools.” Elec. Power Grp., 830 F.3d at
1354; see also MPEP § 2106.05(f) (instructing Examiners to consider
“[w]hether the claim invokes computers or other machinery merely as a tool
to perform an existing process” in determining whether the claim recites
mere instructions to apply the exception) (emphasis omitted) (cited in 2019
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Revised Guidance, 84 Fed. Reg. at 55 n.30). Thus, we conclude the claims
are directed to an abstract idea that is not integrated into a practical
application.
Inventive Concept, Step 2B
Having concluded Appellant’s claims are directed to an abstract idea
under the 2019 Revised Guidance (Step 2A analysis), we consider whether
claim 3 has an inventive concept, that is, whether the claim has additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). As
discussed above, this requires us to evaluate whether the additional claim
element (the drone) adds “a specific limitation or combination of limitations
that are not well-understood, routine, conventional activity in the field” or
“simply append[] well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality.”
2019 Revised Guidance, 84 Fed. Reg. at 56. If the Examiner or the Board
determines under Step 2B that the additional elements (or combination of
additional elements) amount to significantly more than the exception itself,
the claim is eligible, thereby concluding the eligibility analysis.
Here, the Examiner determined that Appellant’s claim 3 (and claim 6)
“do[] not include additional elements that are sufficient to amount to
significantly more than the judicial exception” because the additional
element (the drone) “is merely used to capture the images to be processed by
the claimed method of claim 3” (i.e., the image analysis process) (supra).
Final Act. 9. “Thus, the capture of images used in the process is merely
extra[-]solution activity (i.e. obtaining data to be processe[d]).” Final Act. 9;
see Ans. 4–5.
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Appellant does not address explicitly how the additional element (the
drone) allegedly performs functions that are not well-known, routine, and
conventional with respect to the second step of the Alice analysis. Instead,
Appellant merely contends that the drone provides “meaningful limits on the
claims” (Appeal Br. 8). See Appeal Br. 6–8.
Appellant fails to persuade us of error in the Examiner’s rejection
with respect to the second Alice step (Step 2B). We agree with the Examiner
that Appellant’s claim 3 (as well as claim 6) does not evince an “inventive
concept” that is significantly more than the abstract idea itself. In particular,
Appellant fails to explain how the additional element(s) (supra) add specific
limitations beyond the judicial exception that are not well-understood,
routine, and conventional in the field.
As previously discussed, claim 3 merely recites an additional non-
abstract element (the drone) that captures images that are input to the
abstract image analysis process. The record supports the Examiner’s
findings (see Final Act. 7–9; Ans. 3–5; Spec. ¶¶ 9, 43)) that the additional
element (the drone), individually and as an ordered combination, is a generic
component that carries out common image capture (data collection) to
facilitate image analysis and extraction of information to determine results
(the image analysis process—i.e., the abstract idea), and that the additional
element (the drone) is well-understood, routine, and conventional, specified
at a high level of generality. See, e.g., Spec. ¶¶ 9, 43; see also 2019 Revised
Guidance, 84 Fed. Reg. at 56.
Generic components that facilitate conventional (un-recited) computer
processes operating on conventional computer hardware “do not alone
transform an otherwise abstract idea into patent-eligible subject matter.”
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FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
2016) (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256
(Fed. Cir. 2014)). Further, generically claimed elements (such as computing
devices) have been found to be no more than well-understood, routine, and
conventional in the context of gathering, assembling, and analyzing
information. See, e.g., Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed.
Cir. 2018) (“These conventional limitations of claim 1, combined with
limitations of analyzing and comparing data and reconciling differences
between the data . . . amount to no more than performing the abstract idea of
parsing and comparing data with conventional computer components.”).
Appellant has not persuasively shown the additional element amounts
to significantly more than the abstract idea when considered either
individually or in (as a) combination with the abstract idea. Thus, we are not
persuaded of Examiner error in the rejection of claims 3 and 6 under 35
U.S.C. § 101.
For at least the reasons above, we sustain the Examiner’s rejection
under 35 U.S.C. § 101 of independent claim 3, as well as dependent claim 6
that depends from claim 3, and which was not argued separately with
specificity.
The Indefiniteness Rejection
The Examiner rejects independent claim 3 and dependent claim 6 as
being indefinite. See Final Act. 10–11; Ans. 5–7. Specifically, the
Examiner finds that, with respect to claim 3, “applicant claims that the three
images are input at a beginning of each analyzing step,” but “the previous
limitations in the claim, recite . . . that the input data is input prior to the
decision analyzing step,” and more specifically, “‘image detecting
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analyzing’ and ‘extracting key points’ happen before the decision
analyzing,” making the limitation unclear. Final Act. 10. The Examiner
also finds that, with respect to claim 3, “applicant has claimed a number of
different ‘images,’” e.g., “applicant claims ‘three images,’” “two images,”
“an original image,” “a ‘current image,’” and “a ‘previous image,’” but “it is
unclear if any or all of these images are the same images or different
images,” making the “claim language . . . unclear as to how each of these
images are related.” Final Act. 10–11. The Examiner further finds that,
with respect to claim 3, “applicant claims a ‘vehicle,’ . . . a ‘new vehicle,’ . .
. and an ‘old vehicle,’” but “also claims an ‘object of interest,’” making it
“unclear if the previously claimed vehicles are also the claimed object of
interest.” Final Act. 11. Additionally the Examiner further finds that, with
respect to claim 3, “applicant claims ‘a last time,’” but it “is unclear to what
‘last time’ applicant is referring,” making the limitation unclear. The
Examiner also finds that, with respect to claim 3, “applicant claims ‘a
waypoint of interest’”; however, “previously . . . applicant . . . claimed ‘a
waypoint,’” making it unclear if the waypoint(s) are the same. Final Act. 11.
The Examiner further finds that, with respect to claim 6, “applicant has
claimed ‘image data defining features in each image generated during the
step of image detecting analysis,’” but “in claim 3, applicant claims that the
image detecting analysis step (step b) extracts feature detection, key points,
and descriptors,” making it “unclear from the claim language if the image
data defining features in claim 6 are the same data extracted in the feature
detection, key points, and descriptors.” Final Act. 11.
Appellant provides an explanation with respect to each of the
Examiners grounds for reject (supra), and contends that the Examiner’s
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indefiniteness rejections “are no longer applicable” (Appeal Br. 15). See
Appeal Br. 12–15. Appellant, however, fails to address the substance of the
Examiner’s rejection and does not explain how the Examiner’s rejections are
erroneous, or how the Examiner misconstrued the claims.
The essence of the requirement under 35 U.S.C. § 112(b), is that the
language of the claims must make clear what subject matter the claims
encompass—i.e., “whether those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Star Scientific,
Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1380 (Fed. Cir. 2011)
(quoting Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565,
1576 (Fed. Cir. 1986)); see In re Packard, 751 F.3d 1307, 1310–14
(Fed. Cir. 2014).
“[W]e apply the approach for assessing indefiniteness approved by the
Federal Circuit in Packard, i.e., ‘[a] claim is indefinite when it contains
words or phrases whose meaning is unclear.’ Put differently, ‘claims are
required to be cast in clear—as opposed to ambiguous, vague, indefinite—
terms.’” In re McAward, Appeal 2015-006416, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential) (quoting In re Packard, 751 F.3d at
1310, 1313, 1314) (alteration in original).
Section 112 places the burden of precise claim drafting on the
applicant. See In re Morris, 127 F.3d 1048, 1056–57 (Fed. Cir. 1997).
[T]he patent drafter is in the best position to resolve the
ambiguity in the patent claims, and it is highly desirable that
patent examiners demand that applicants do so in appropriate
circumstances so that the patent can be amended during
prosecution rather than attempting to resolve the ambiguity in
litigation.
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See Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed.
Cir. 2008). “[D]uring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.” See In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989). Rigorous application of the statutory standard to particularly point
out and distinctly claim the subject matter regarded to be the invention serve
an important public notice function. Predicate Logic, Inc. v. Distributive
Software, Inc., 544 F.3d 1298, 1300 (Fed. Cir. 2008).
Turning to the instant appeal, we find the Examiner’s rejections with
respect to the various images delineated in claim 3 to be exemplary of the
lack of clarity in claim 3 (as well as claim 6). As pointed out by the
Examiner (supra), Appellant recites inputting either “three images” or “two
images” “at a beginning of said decision analyzing step” (dependent on
when the drone arrives at a waypoint). Appeal Br. 16 (Claims App.) (claim
3) (emphasis added). The claim, however, recites “inputting data so as to
form inputted data” prior to the step of “image detecting analyzing” using
“feature detection,” a “key point detector, and [a] descriptor extractor
algorithm operating on the inputted data” (i.e., performing image analysis) to
produce “image detecting analyzed data” (i.e., analyzed image data).
Appeal Br. 16 (Claims App.) (claim 3) (emphasis added). The claim then
(subsequently) extracts data from the analyzed image data—“extracting key
points from the image detecting analyzed data” to produce “extracted key
pointed data” (i.e. extracted key points or key point information). Appeal
Br. 16 (Claims App.) (claim 3). After the image analysis and information
extraction steps, the claim recites determining a decision using the extracted
key point information—“decision analyzing of the extracted key pointed
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data” to produce “decision analyzed data.” Appeal Br. 16 (Claims App.)
(claim 3). We agree with the Examiner that, without distinguishing among
the various data, it is unclear how the various data can be input to the
process before performing image analysis to produce extracted key point
information and input after the extracted key point information is produced
(that is “prior to the decision analyzing step to compare with the new image”
(Appeal Br. 12)). The inputting of image data (and the limitations directed
to inputting data) are, therefore, unclear. Further, as explained by the
Examiner, the various images (the “three images,” “two images,” “original
image,” “current image,” and “previous image”) are related.
The Specification does not clarify our understanding of how the
images interrelate. See, e.g., Spec. ¶¶ 7, 8, 12, 19, 24. There is an ambiguity
in the claim as to whether (which of) the “original image,” “current image,”
and “previous image” are part of the group of “three images” and/or “two
images.” Appellant does not explain how to reconcile this ambiguity. Thus,
Appellant provides no persuasive reasoning that points to error in the
Examiner’s interpretation and analysis of the disputed terminology.
This same reasoning is applicable to each of the remaining
indefiniteness rejections made by the Examiner (supra). Therefore, for each
of the reasons set forth (supra), we affirm the Examiner’s rejection of claim
3 and dependent claim 6 as being indefinite.
CONCLUSION
Appellant has not shown that the Examiner erred in rejecting claims 3
and 6 under 35 U.S.C. § 101. Appellant has also not shown that the
Examiner erred in rejecting claims 3 and 6 under 35 U.S.C. § 112(b). We,
therefore, sustain the Examiner’s rejections of claims 3 and 6.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
3, 6 101 Eligibility 3, 6
3, 6 112(b) Indefiniteness 3, 6
Overall
Outcome
3, 6
RESPONSE
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