Sireesh Mutharaju et al.

Patent Trials and Appeals Board

Aug 27, 2019

14319556 - (D) (P.T.A.B. Aug. 27, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/319,556 06/30/2014 Sireesh Mutharaju 20140358 3808
25537 7590 08/27/2019
VERIZON
PATENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
EXAMINER
HENSON, MISCHITA L
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
08/27/2019 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):
patents@verizon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SIREESH MUTHARAJU, SHUNMUGAPRIYA SIVABALAN,
SHAN SASIDHARAN, RADHIKA SUNDARESWARAN, and
ARUMUGASANKAR RAMAKRISHNAN
____________

Appeal 2018-008518
Application 14/319,556
Technology Center 2800
____________

Before GRACE KARAFFA OBERMANN, MONTÉ T. SQUIRE, and
MERRELL C. CASHION, Jr., Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–7, 9, 10, 13–17, and 21–28, which are all of the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 In this Decision, we refer to the Specification filed June 30, 2014
(“Spec.”); Final Office Action dated Nov. 6, 2017 (“Final Act.”); Advisory
Action dated Jan. 19, 2018 (“Adv. Act.”); Appeal Brief filed Mar. 19, 2018
(“Appeal Br.”); Examiner’s Answer dated July 06, 2018 (“Ans.”); and Reply
Brief filed Aug. 23, 2018 (“Reply Br.”).
2 Appellant is the Applicant, Verizon Patent and Licensing Inc. Bib. Data
Sheet 1. According to the Appeal Brief, “Verizon Communications Inc. and
its subsidiary companies” is the real party in interest. Appeal Br. 3.
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We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a method to facilitate the accurate
position determination of outside plant (OSP) elements within
telecommunication network infrastructures. Spec. ¶ 13; Abstract.
According to the Specification, the claimed subject matter performs
“geometric analysis” (Spec. ¶¶ 14–16) on mapping data to automatically
categorize deviations in OSP element positions over two-dimensional
segments representing smaller sub-areas within a specified region of a map,
and also flag segments where one or more OSP elements exhibit
unacceptable position errors (id. ¶ 13).
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A method, comprising:
partitioning, by one or more processors, a first map into
a plurality of segments, wherein the first map represents a layout
for outside plant (OSP) elements located within a region;
identifying, by the one or more processors, at least one
segment of the plurality of segments that is unsuitable for a
geometric analysis;
subdividing, by the one or more processors, the at least
one identified segment into multiple segments, until each of the
multiple segments is suitable for geometric analysis;
performing, by the one or more processors, the geometric
analysis on the segments in the first map and on spatially
corresponding segments in a geocoded map, wherein
performing the geometric analysis includes:
determining at least one first spatial metric based on
a position of at least one OSP element and a position of at
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least one control point within each segment in the first
map, and
determining at least one second spatial metric based
on a position of the at least one OSP element and a position
of the at least one control point in a corresponding segment
in the geocoded map;
comparing, by the one or more processors, the
geometric analysis of the segments in the first map and the
geometric analysis of the spatially corresponding
segments in the geocoded map, wherein comparing the
geometric analysis includes:
determining deviations between the at least one first
spatial metric and the at least one second spatial metric for
each corresponding segment in the first map and the
geocoded map; and
generating a comparative ranking based on the
deviations, wherein generating a comparative ranking
includes:
establishing categories of ranges of the
determined deviations between the at least one first
spatial metric and the at least one second spatial
metric, wherein the ranges are non-overlapping and
have lower and upper bounds which are sorted in
increasing order,
assigning each segment to one of the
established categories based upon a maximum
determined deviation in each segment,
counting a number of segments assigned to
each of the established categories, and
labeling each segment based upon the
established category to which it is assigned; and
displaying, by the one or more processors via a graphical
output including a display window and a control window that
includes user input fields, each labeled segment on the
geocoded map based on the assigned category of each segment
according to values received via the user input fields.
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Appeal Br. 16–17 (key disputed claim language italicized and bolded).
REJECTION ON APPEAL
The Examiner maintains (Ans. 2) the following rejection on appeal:
Claims 1–7, 9, 10, 13–17, and 21–28 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more. Final Act. 3–9.
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejection.
Accordingly, we affirm the Examiner’s § 101 rejection based on the
fact-finding and reasoning set forth below, in the Final Action (Final
Act. 3–9), in the Advisory Action (Adv. Act. 2–3), and in the Answer (Ans.
2–11).
I. Standard for Patent Ineligibility
Section 101 of the Patent Act provides “[w]hoever 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. The Supreme Court, however, 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
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Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks and citation
omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See 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 (1853))); 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
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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
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook).
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).
The USPTO 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) (“Guidance”). Under the Guidance, we 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
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(2) additional elements that integrate the judicial
exception into a practical application (see MPEP §
2106.05(a)–(c), (e)–(h)).3
See Guidance, 84 Fed. Reg. at 52, 55–56. 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 Guidance, 84 Fed. Reg. at 56.
II. Examiner’s Findings and Conclusion
Applying the Alice/Mayo two-step framework, the Examiner rejects
claims 1–7, 9, 10, 13–17, and 21–28 under 35 U.S.C. § 101 as being directed
to a judicial exception (i.e., a law of nature, a natural phenomenon, or an
abstract idea) without significantly more. Final Act. 3–9; Ans. 2–11. At the
first step of the Alice/Mayo inquiry, the Examiner determines that the claims
are directed to the “abstract idea of a mathematical relationship or formula.”
Final Act. 3. For example, the Examiner determines that claim 1 recites the
abstract idea of “organizing and manipulating information through
mathematical correlations.” Id. at 5; see also Ans. 8 (finding the
“implementation of a geometric analysis scheme amounts [to] mathematical
manipulation of collected data (an abstract idea)”).

3 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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At the second step of the Alice/Mayo inquiry, the Examiner
determines that the claims
do not include additional elements that are sufficient to
amount to significantly more than the judicial exception
because the additional computer elements, which are
recited at a high level of generality, provide conventional
computer functions that do not add meaningful limits to
practicing the abstract idea.
Id. at 3. The Examiner finds that the steps recited in claim 1, for example,
“describe the concept of collecting information, analyzing it, and displaying
certain results of the collection and analysis, which corresponds to concepts
identified as abstract ideas by the courts, such as Electric Power Group.” Id.
at 5; see also Ans. 4–5 (explaining the “combination of features” does not
distinguish the claims from Electric Power Group). The Examiner further
finds the claims are not directed to an improvement in computer
functionality. See Ans. 7–8.
Thus, the Examiner concludes that “[w]hen considering the
limitations individually and as a whole, the claims do not amount to
significantly more than the abstract idea.” Final Act. 5; see also Adv.
Act. 2–3 (distinguishing the instant claims from the claims at issue in Enfish
and concluding the claims “are directed to an abstract idea without
significantly more”).
With respect to claims 2–7, 9, 10, 13–17, and 21–28, the Examiner
determines that these claims include all the limitations and recite the same
abstract idea as claim 1, i.e., “organizing and manipulating information
through mathematical correlations.” Final Act. 5. The Examiner finds that
the claims recite additional limitations that are directed to extending the
abstract idea and do not add any meaningful limitations that amount to more
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than generally linking the use of the abstract idea to a particular
technological environment or any unconventional steps that confine the
claim to a particular useful application. Id. at 5. The Examiner further finds
that, as evidenced by the Specification, the additional elements recited in the
claims involve the use of
[g]eneric computer components recited as performing
generic computer functions that are well-understood,
routine and conventional activities amount to no more than
implementing the abstract idea with a computerized
system.
Id. at 6 (citing Spec. ¶¶ 32–37, 41, 43, 55).
Thus, for principally the same reasons discussed above for claim 1,
the Examiner concludes that claims 2–7, 9, 10, 13–17, and 21–28 are
patent-ineligible under 35 U.S.C. § 101 because the additional elements they
recite, when considered individually and as a whole, do not amount to
significantly more than the abstract idea itself. Id. at 6.
III. Appellant’s Contentions
Appellant argues that the Examiner’s § 101 rejection should be
reversed because the Examiner reversibly erred in determining the claims
are directed to an abstract idea. Appeal Br. 10–14; Reply Br. 2–4. In
contrast to the Examiner’s rejection, Appellant argues that the claims are not
directed to patent-ineligible subject matter. Appeal Br. 10–11; Reply Br. 2.
In particular, Appellant argues that claim 1 materially differs from the
claims at issue in Electric Power Group and the Examiner’s rationale, based
on Electric Power Group and set forth in the Final Office Action, is “not
supported by the record.” Appeal Br. 10. Rather, Appellant contends that
the recited
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combination of features distinguishes the focus of claim[]
1 . . . from the focus of the claims in suit in Electric Power
Group, and thus Appellant’s claims are “different enough
in substance” from the patent-ineligible concept identified
by the Electric Power Group court.
Id. at 11.
Appellant further argues that the “features of claim 1 speak to an
improvement and should not be discounted or overly generalized under the
‘directed to’ inquiry.” Id. at 11. Appellant contends that claim 1 “addresses
the challenges associated with implementation of a geometric analysis
scheme with respect to accurate position determination of outside plant
(OSP) elements within telecommunication network infrastructures” and the
recited combination of features “amount to an improvement in technology.”
Id. at 12–13 (citing Spec. ¶ 13).
In particular, Appellant contends that
[t]he functionality provided by automatically verifying
geocoded maps for position accuracy of OSP elements,
and individually checking segments for OSP element
position errors over large datasets . . . cannot be distilled
down to the routine and conventional activity of
“collecting information, analyzing it, and displaying
certain results of the collection and analysis”––but should
instead be viewed as a technological improvement under
the “directed to” inquiry.
Id. at 13 (citing Spec. ¶ 27). Appellant also contends that claim 1 is
analogous to “the incidental involvement of data operations identified in the
patent-eligible concepts identified in Amdocs and Enfish.” Appeal Br. 13.
Thus, Appellant maintains that, when looked at as a whole, claim 1 is
directed to a patentable, technological improvement over the existing,
manual accuracy determination techniques. Id. at 14 (citing McRO, Inc.
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v. Bandai, 837 F.3d 1299, 1316 (Fed. Cir. 2016)); see also Reply Br. 4
(arguing “that such innovation amounts to a non-abstract improvement to
computer technology”) (citing Finjan, Inc. v. Blue Coat Systems, Inc., 879
F.3d 1299, 1304 (Fed. Cir. 2018)).
IV. Our Analysis
Appellant argues claims 1, 15, and 23 as a group and does not present
separate arguments for the patentability of remaining claims 2–7, 9, 10, 13,
14, 16, 17, 21, 22, and 24–28 . Appeal Br. 10, 14. We select claim 1 as
representative and the remaining claims subject to the Examiner’s rejection
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
For the reasons stated below, and based on the findings and analysis
provided by the Examiner at pages 2–6 of the Answer, pages 2–3 of the
Advisory Action, and pages 3–8 of the Final Office Action, we determine
that claim 1 is directed to an abstract idea and does not contain an inventive
concept sufficient to transform the claimed abstract idea into a
patent-eligible application. We therefore sustain the Examiner’s rejection
under 35 U.S.C. § 101.
A. Guidance Step 1
Under Step l, we consider whether the claimed subject matter falls
within the four statutory categories set forth in § 101, namely “[p]rocess,
machine, manufacture, or composition of matter.” Guidance, 84 Fed. Reg.
at 53–54; see 35 U.S.C. § 101. Claim 1 recites a “method” and, thus, falls
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within the “process” category. Consequently, we proceed to the next step of
the analysis.
B. Guidance Step 2A Prong 1
Under Step 2A Prong l, we evaluate “whether the claim recites a
judicial exception, i.e., an abstract idea, a law of nature, or a natural
phenomenon.” Guidance, 84 Fed. Reg. at 54; see Alice, 573 U.S. at 216.
Claim 1 recites a method that includes (1) partitioning, by one or more
processors, a first map into a plurality of segments; (2) identifying, by the
one or more processors, at least one segment of the plurality of segments;
(3) subdividing, by the one or more processors, the at least one identified
segment into multiple segments; (4) performing, by the one or more
processors, the geometric analysis on the segments in the first map; and
(5) displaying, by the one or more processors via a graphical output
including a display window and a control window, each labeled segment on
the geocoded map. See Appeal Br. 16–17 (Claims Appendix).
Consistent with the Examiner’s analysis, we determine that claim 1
recites a judicial exception, i.e., an abstract idea, in the form of mathematical
concepts because the “partitioning,” “subdividing,” and “performing” steps,
for example, each involves the use of mathematical correlations,
mathematical relationships, performing mathematical operations, and/or
mathematical manipulations of collected data. For example, the
“partitioning” step involves using one or more processors to geometrically
partition/divide land base maps that are in digital form, i.e., digital map
datasets, into a plurality of segments via mathematical operation. See Spec.
¶ 14 (disclosing “embodiments for determining accurate positions of OSP
elements may initially include partitioning a first map, which, for example,
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may be a land base map as shown in Fig. 1, into a plurality of segments”),
¶ 19 (disclosing that “land base maps were originally developed on paper
and subsequently converted into a digital . . . map dataset” and “[w]hen in
digital form, land based maps 100 may be represented using the Intelligent
Computer Graphics System/Integrated Data Distribution System
(ICGS/IDDS) standards, or using the Mapping Application for Public Safety
(MAPS)” data formats).
The “subdividing” step, likewise, involves using one or more
processors to further subdivide the plurality of segments into smaller
segments via mathematical operation. Spec. ¶ 14 (disclosing that “[t]he
subdividing process of the segments can be iterative, and may continue to
divide the previously divided segments into increasingly smaller
segments.”).
The “performing” step also involves using one or more processors to
compute/calculate spatial metrics associated with the first map and a
geocoded map via mathematical computation and manipulation of data. See
Spec. ¶ 14, ¶ 15 (disclosing that “[g]eometric analysis may include
computing spatial metric(s) associated with OSP elements for the segments
in the first map” and “[c]orresponding spatial metric(s) may be computed in
a geocoded map, which may be generated from coordinate conversion and
conflation of the first map”), ¶ 20 (disclosing that “[l]and base maps may be
transformed to geocoded maps using a conventional coordinate conversion
and conflation process” and the “use of geocoded maps increases the
accuracy and provides compatibility with modern GIS databases and
mapping software”).
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The mere fact, however, that claim 1 recites an abstract idea in the
form of mathematical concepts does not automatically render the claim
patent-ineligible. Diehr, 450 U.S. at 187 (“A claim drawn to subject matter
otherwise statutory does not become nonstatutory simply because it uses a
mathematical formula.”). Thus, we proceed to the Step 2A Prong 2 of the
Guidance.
C. Guidance Step 2A Prong 2
Under Step 2A Prong 2, we must “(a) [i]dentify[] whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluat[e] those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.” Guidance, 84 Fed. Reg. at 54–55. Additional elements that
merely add insignificant extra-solution activity to an abstract idea fail to
integrate the abstract idea into a patent-eligible practical application. See id.
at 55.
On the record before us, we determine that claim 1, as a whole, does
not integrate the judicial exception into a practical application. As recited in
the claim, in addition to the “partitioning,” “subdividing,” and “performing”
steps, the method also includes the steps of “identifying, by the one or more
processors, at least one segment of the plurality of segments” and
“displaying, by the one or more processors via a graphical output . . . each
labeled segment on the geocoded map.” Appeal Br. 16–17 (Claims
Appendix). These additional elements, however, do not integrate the
abstract idea of claim 1 into a practical application.
Rather, consistent with the Examiner’s findings and analysis, we
determine that claim 1’s “identifying” and “displaying” steps are merely
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data gathering/processing steps, essentially involving collecting information,
analyzing it, and displaying certain results of the collection and analysis,
necessary to conduct the recited abstract idea, which constitute
extra-solution activity insufficient to confer patent-eligibility to the claim.
Guidance, 84 Fed. Reg. at 55, 55 n.31; MPEP § 2106.05(g). See also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(holding that mere data gathering is insufficient to confer patent eligibility).
As the Examiner finds (Adv. Act. 2), the Specification discloses that
the method of claim 1 is conducted through gathering the appropriate
geographic and geocoded mapping data (see Spec. ¶¶ 15–20), performing
analysis on the gathered data (id. at ¶¶ 25–31), and displaying the specific
results of the “comparisons of the geometric analysis performed” (id. at ¶
32). The fact that the additional elements relate to OSP mapping data and
may be implemented using generic computer equipment (i.e., “by the one or
more processors” or “by the one or more processors via a graphical output
including a display window and a control window”) does not integrate the
abstract idea into a practical application or otherwise render it any less
abstract. See Guidance, 84 Fed. Reg. at 52; see also Alice, 573 U.S. at 223
(holding that “the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention”); Fair
Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016)
(citing Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278
(Fed. Cir. 2012) (“[T]he fact that the required calculations could be
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performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”)).
Moreover, we agree with the Examiner findings (Final Act. 5–6; Ans.
7–8; Adv. Act. 2–3) that the additional elements do not add any meaningful
limitations that amount to more than generally linking the use of the abstract
idea to a particular technological environment or any unconventional steps
that confine the claim to a particular useful application. The fact that the
claim includes additional elements that “generally link the use of a judicial
exception to a particular technological environment or field of use,” without
more, is insufficient to integrate a judicial exception into a practical
application. Guidance, 84 Fed. Reg. at 55.
Appellant’s arguments do not reveal reversible error in the
Examiner’s analysis and findings in this regard. Appellant’s contentions that
(1) “the features of claim 1 speak to an improvement” (Appeal Br. 11);
(2) the recited combination of features “amount to an improvement in
technology” (id. at 13); and (3) when looked at as a whole, claim 1 is
directed to a patentable, technological improvement over the existing,
manual accuracy determination techniques (id. at 14) are not persuasive
because they are conclusory and Appellant does not provide an adequate
technical explanation to support them. In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997) (explaining that mere lawyer’s arguments or conclusory statements,
which are unsupported by concrete factual evidence, are entitled to little
probative value).
Rather, as the Examiner explains (Ans. 8), the implementation of a
geometric analysis scheme amounts to mathematical manipulation of the
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collected data (an abstract idea) and the discovery of a new or novel way to
mathematically manipulate the collected data does not render the abstract
idea patent eligible. To the extent that Appellant is arguing that
improvements lie in the mathematical concepts themselves, e.g.,
“performing . . . the geometric analysis,” the Supreme Court has held that
“the novelty of the mathematical algorithm is not a determining factor at
all.” See Flook, 437 U.S. at 591–92; see also id. at 594–95 (“Respondent’s
application simply provides a new and presumably better method for
calculating alarm limit values.”); cf. In re Gitlin, No. 2018-1461 (Fed. Cir.
June 13, 2019), slip op. at 5 (“But merely calling for a mathematical concept
to be performed more efficiently or with a particular input does not amount
to an application of the mathematical concept that is patent-eligible.”).
Appellant’s contention that claim 1 is analogous to “the incidental
involvement of data operations identified in the patent-eligible concepts
identified in Amdocs and Enfish” (Appeal Br. 13) is equally unpersuasive.
Claim 1 is distinguishable from the claims found patent-eligible in those
cases. As the Examiner finds (Ans. 5–6), unlike the claims at issue in
Amdocs, claim 1 neither recites nor requires that the generic components
operate in an “unconventional” manner to achieve an improvement in
computer functionality. See Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1303 (Fed. Cir. 2016). Rather, the Specification indicates
that the claimed method merely offers an improvement over performing
calculations by hand. See Spec. ¶ 27 (disclosing that “[c]onventional
approaches to test for accuracy after conversion and conflation involve a
manual process which is extremely time consuming and prone to human
error” and “errors exceeding specifications can easily be overlooked by
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human operators”), ¶ 13 (“The automatic categorization thus permits an
operator to efficiently verify the accuracy of vast amounts of map data.”).
As the Examiner further finds (Ans. 7), unlike the claims at issue in
Enfish, the additional elements recited in claim 1 do not result in an
improvement to a logical structure or process that changes the way the
computer itself or other technology functions. See Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016) (finding the claims “are
directed to a specific improvement to the way computers operate, embodied
in the self-referential table”).
Appellant’s arguments regarding the McRO decision (Appeal Br. 14)
and Finjan decision (Reply Br. 2–3) are not persuasive because the instant
claims are distinguishable from the claims at issue in both of those cases. In
McRO, the court found that the claims were not abstract because they were
“focused on a specific asserted improvement in computer animation.”
McRO, 837 F.3d at 1314. In particular, the court found that the claims in
McRO were directed to the creation of something physical––namely, the
display of “lip synchronization and facial expressions” of animated
characters on screens for viewing by human eyes and the claimed
improvement was to how the physical display operated to produce better
quality images. Id. at 1313–14.
In Finjan, the court found that the claimed method “employ [ed] a
new kind of file that enable[d] a computer security system to do things it
could not do before.” Finjan, 879 F.3d at 1305. The court found that, prior
to the Finjan invention, virus scans were “limited to recognizing the
presence of previously-identified viruses, typically by comparing the code in
a downloadable to a database of known suspicious code.” Id. at 1304.
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Here, unlike the claims in both McRO and Finjan, Appellant’s
claimed invention merely involves performing computations and
mathematically manipulating mapping data, and does not recite an
improvement to a particular computer technology or functionality as was the
case in McRO and Finjan.
Having determined that claim 1 recites a judicial exception but the
additional elements recited in the claim do not integrate the judicial
exception into a practical application, i.e., the claim is directed to an abstract
idea, we proceed to Step 2B of the Guidance.
D. Guidance Step 2B
Under Step 2B of the Guidance, we determine whether the claim
provides an “inventive concept,” i.e., whether the additional elements
beyond the judicial exception, individually and in combination, amount to
“significantly more” than the judicial exception itself. Guidance, 84 Fed.
Reg. at 56. According to the Guidance, “simply append[ing]
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality,” is indicative that an
inventive concept is absent. Id. at 56.
Consistent with the Examiner’s findings and analysis (Final Act. 5–6;
Ans. 8–9; Adv. Act. 2–3), we determine that claim 1 is directed to an
abstract idea, i.e., using mathematical correlations and mathematically
manipulating collected mapping data for determining positions of OSP
elements, and simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, and thus, fails to provide an inventive concept sufficient to
transform the abstract idea into patent-ineligible subject matter.
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In particular, as the Examiner finds (Final Act. 6), the Specification
makes clear that the additional elements recited in the claims involve the use
of generic computer components performing generic computer functions that
are well-understood, routine and conventional activities that amount to no
more than implementing the abstract idea with a computerized system. See
Spec. ¶¶ 32–37, 41, 43, 55.
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s analysis and findings in this regard. Appellant’s assertion
that the “functionality provided by automatically verifying geocoded maps
for position accuracy of OSP elements, and individually checking segments
for OSP element position errors over large datasets . . . cannot be distilled
down to the routine and conventional activity” (Appeal Br. 13) is not
persuasive because it is conclusory and Appellant does not identify any
specific language in the claim or disclosure in the Specification to support
that assertion. De Blauwe, 736 F.2d at 705.
Thus, we determine the additional elements recited in claim 1 beyond
the abstract idea, individually and in combination, do not amount to
“significantly more” than the abstract idea itself. Alice, 573 U.S. 217–218.
Accordingly, we affirm the Examiner’s rejection of claims 1–7, 9, 10,
13–17, and 21–28 under 35 U.S.C. § 101 as being directed to a judicial
exception.
DECISION
The Examiner’s rejection of claims 1–7, 9, 10, 13–17, and 21–28 is
affirmed.
It is ordered that the Examiner’s decision is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED