YABE, Masaaki et al.

Patent Trials and Appeals Board

Dec 23, 2019

14888998 - (D) (P.T.A.B. Dec. 23, 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.
14/888,998 11/04/2015 Masaaki YABE 129E_092_TN 1018
23400 7590 12/23/2019
POSZ LAW GROUP, PLC
12040 SOUTH LAKES DRIVE
SUITE 101
RESTON, VA 20191
EXAMINER
PHAM, LY D
ART UNIT PAPER NUMBER
2827
NOTIFICATION DATE DELIVERY MODE
12/23/2019 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):
dposz@poszlaw.com
mailbox@poszlaw.com
tvarndell@poszlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAAKI YABE, ICHIRO MARUYAMA, SATOSHI
MINEZAWA, TOSHIAKI YOSHIKAWA, HIROTOSHI YANO,
DAISUKE IIZAWA, KENICHIRO TANAKA, and TAKASHI OGINO
Appeal 2019-001962
Application 14/888,998
Technology Center 2800
Before BRADLEY R. GARRIS, MICHELLE N. ANKENBRAND, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10 and 12–16. Final Act. 4; Ans. 2.2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims seek to resolve a problem that, when a user is given a
blueprint of a floor plan, “the user is unable to freely edit the floor plan
image, and as a result, device layout information cannot be generated easily”
by “enabling the easy generation of layout information for electric devices
connected to a network in a home.” Spec. ¶¶ 5, 6.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A layout generation system for generating layout
information for an electric device connected to a network in a
home, comprising:
a processor and a memory, wherein the processor is
configured to execute a program stored in the memory to
edit a floor plan of the home in accordance with a
first user operation;
position, in accordance with a second user
operation, an icon indicating the electric device in each room in
the edited floor plan; and

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
“MITSUBISHI ELECTRIC CORPORATION.” Appeal Br. 5.
2 The Examiner withdrew part of the analysis for the rejection under section
101 in the Answer, but maintained the rejection under section 101 for these
claims. Ans. 2.
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generate, based on the edited floor plan and the
positioned icon, layout information in which the room and the
electric device are associated with each other.
Appeal Br. 32 (Claims Appendix).
REJECTION
The Examiner rejects claims 1–10 and 12–16 under 35 U.S.C. § 101.
Final Act. 4.
OPINION
Legal Framework
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, our
inquiry focuses on 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.”).
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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, 69 (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
mathematical formula.” Diehr, 450 U.S. at 176; 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); see, 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.”).
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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 (citations 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 Office recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”), 84 Fed. Reg. 50
updated by USPTO, October 2019 Update: Subject Matter Eligibility
(available at https://go.usa.gov/xp88j); see also October 2019 Patent
Eligibility Guidance Update, 84 Fed. Reg. 55942 (Oct. 18 2019) (notifying
public that October update was available). 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)).
Only if a claim recites a judicial exception and does not integrate that
exception into a practical application, do we then look to whether the claim:
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(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 generally Memorandum.
Analysis
Applying the guidance set forth in the Memorandum, we conclude
that claims 1–10 and 12–16 are directed to a judicial exception and are
ineligible under § 101.
Revised Step 2A, Prong One–Directed to a Judicial Exception
The Memorandum instructs us first to determine whether each claim
recites any judicial exception to patent eligibility. 84 Fed. Reg. at 54. The
Memorandum identifies three judicially-excepted groupings: (1)
mathematical concepts, (2) certain methods of organizing human activity
such as fundamental economic practices, and (3) mental processes. Id. at 52.
The Examiner finds that the claims are directed to the abstract idea of
drawing a floor plan, which can be done mentally or manually with pen and
paper. Ans. 3; Final Act. 5. Appellant, on the other hand, argues that “the
claimed invention cannot be performed purely mentally due to the steps
which require the processor, the memory, the program, the icon, the first
user operation (which edits a floor plan), and the second user operation
(which positions the icon).” Appeal Br. 24.
Based on the Specification, the terms “memory” and “processor” are
recognized as representing known classes of structures that can perform the
functions set forth in the claim, e.g., the “memory” is claimed as a generic
“flash memory” that performs the generic function of storing data. Spec.
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¶¶ 16, 33. The term “layout information” is understood to be “location
information indicating the installation position” in a floor plan drawing. Id.
¶ 6. Based on the plain meaning of the words in the claim, the broadest
reasonable interpretation of claim 1 is a system having a memory and a
processor wherein the processor is coupled to the memory and programmed
with executable instructions in the form of software modules that draw a
floor plan. Despite the recitation of these generic components, the claims
are nonetheless directed to an abstract idea that can be carried out mentally
or manually by pen and paper.
More specifically, claim 1 recites the following limitations: (1) “edit a
floor plan of the home in accordance with a first user operation;” (2)
“position, in accordance with a second user operation, an icon indicating the
electric device in each room in the edited floor plan;” and (3) “generate,
based on the edited floor plan and the positioned icon, layout information in
which the room and the electric device are associated with each other.”
These limitations, under their broadest reasonable interpretation, involve no
more than collecting, displaying, and manipulating a drawing of a floor plan.
See Spec. ¶¶ 1, 5, 6 (the claims provide “a program enabling the easy
generation of layout information” of “a floor plan image and an icon
image”).
Limitation (1) “edit a floor plan . . .” manipulates an existing floor
plan drawing to achieve a modified floor plan drawing. The Specification
provides that when “floor plan editing has not been conducted, the floor plan
information 242 is all blank data” and that “the floor plan information 242 is
generated after floor plan editing by the control module 25 . . . finishes.”
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Spec. ¶ 18; see also id. FIGs. 7A–11 and accompanying texts (describing
various scenarios of editing floor plan images).
Limitation (2) “position . . . an icon . . . in the edited floor plan”
manipulates a floor plan drawing and displays a modified floor plan drawing
that includes an additional image (the icon). The Specification provides that
the icon is displayed in “the floor plan image MD.” Spec. ¶ 30; see also id.
Figs. 8A–11 and accompanying texts (describing various scenarios of
displaying the image data on the floor plan data).
Limitation (3) “generate . . . layout information” provides a floor plan
drawing comprising “location information indicating the installation
position” in the floor plan drawing. Spec. ¶ 5. The Specification provides
that floor plan editor 252 generates and displays “the floor plan image MD”
after the floor plan information has been edited. Id. ¶¶ 20–30 (describing
various displays of edited data); see also id. Figs. 7A–11 and accompanying
texts (describing various scenarios of drawing and modifying a floor plan
and illustrating a display of the edited drawing).
The dependent claims similarly recite drawing a floor plan, such as
“move . . . the icon” (claims 2 and 3), “generate . . . icon” (claim 4), and
“position . . . the icon” (claims 4 and 5), to name a few.
As the Specification explains, the claims seek to provide “the easy
generation of layout information.” Spec. ¶ 1. These claims thus involve
nothing more than modifying a drawing (i.e., editing an existing floor plan
drawing and positioning an icon in the drawing) and providing the modified
drawing (i.e., generating a new drawing).
Appellant’s argument that the claims are not abstract ideas because
they include a memory and a processor (Appeal Br. 20–21, 25) is not
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persuasive. The recitation of a memory and a processor in these claims does
not negate the abstract nature of these limitations because the claim here
merely uses the processor/memory as a tool to perform the otherwise
abstract ideas. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1373 (Fed. Cir. 2011) (“[A] method that can be performed by human
thought alone is merely an abstract idea and is not patent-eligible under
§ 101.”). The Federal Circuit has repeatedly held that information collection
and the display thereof, without more, including when limited to particular
content, is within the realm of abstract ideas, and that merely presenting the
results of the abstract process of collecting information is abstract as an
ancillary part of the collection and analysis. See, e.g., Elec. Power Grp. v.
Alstom, S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (“[W]e have treated
collecting information, including when limited to particular content (which
does not change its character as information), as within the realm of abstract
ideas.”); SAP Am., Inc. v. Investpic, LLC, 898 F.3d 1161, 1168 (Fed. Cir.
2018) (“As many cases make clear, even if a process of collecting and
analyzing information is ‘limited to particular content’ or a particular
‘source,’ that limitation does not make the collection and analysis other than
abstract.” (quoting Elec. Power Grp., 830 F.3d at 1355 (citing cases)).
Similarly here, as described above, we find that the claims involve
nothing more than drawing a floor plan – activities squarely within the realm
of abstract ideas. See Elec. Power Grp., 830 F.3d at 1353–54
(characterizing collecting information, analyzing information by steps
people go through in their minds, or by mathematical algorithms, and
presenting the results of collecting and analyzing information, without more,
as matters within the realm of abstract ideas).
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Based on the foregoing, the claims are directed to the judicial
exception of an abstract idea in the first prong of the revised Step 2A of the
2019 Guidelines. See Memorandum, 84 Fed. Reg. 51–52.
Revised Step 2A, Prong Two – Practical Application
Having determined that claims 1–10 and 12–16 are directed to an
abstract idea, we next look to determine whether the claims recite
“additional elements that integrate the judicial exception into a practical
application.” MPEP § 2106.05(a)–(c), (e)–(h); Memorandum, 84 F.3d at
53–54. Integration into a practical application requires an additional element
or a combination of additional elements in the claim to “apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the exception.” Memorandum, 84 Fed. Reg. at 53–54; see
also id. at 55 (setting forth exemplary considerations indicative that an
additional element or combination of elements may have integrated the
judicial exception into a practical application).
Here, the elements additional to the abstract idea are the memory and
processor. The memory and processor, however, are recited so generically
(the Specification provides no details whatsoever other than noting that they
are a memory and a processor) that they represent no more than mere
instructions to apply the judicial exception on a computer. These limitations
also appear to be nothing more than an attempt to generally link the use of
the judicial exception to the technological environment of a computer.
Because the courts have made clear that mere physicality or tangibility of an
additional element or elements is not a relevant consideration in the
eligibility analysis, the physical nature of these computer components does
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not affect this analysis. See MPEP 2106.05(I) (providing additional
information on this point, including explanations from judicial decisions
including Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224–26
(2014)).
Appellant does not assert that the claims at issue involve a new
technique for drawing a floor plan. Nor is there any indication in the
Specification that the operations recited in claim 1 require any specialized
computer hardware or other inventive computer components, invoke any
assertedly inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform the
claimed method steps. As noted supra, the Specification discloses just the
opposite, i.e., that the claimed invention may be implemented using only
generic computer components (see, e.g., Spec. ¶¶ 15, 16, 20, 34, 69–70),
which is not enough for patent-eligibility. DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible.”).
We also evaluate whether the overall use of the layout generation
system is “insignificant extra-solution activity.” When so evaluated, the
layout generation system drawing a floor plan represents a mere output of a
floor plan that results from the use of the recited judicial exception (the
output floor plan may be drawn mentally or manually by pen and paper) and
is recited at a high level of generality. The overall use of the layout
generation system is thus insignificant extra-solution activity. See MPEP
2106.05(g) (discussing limitations that the Federal Circuit has considered to
be insignificant extra-solution activity, for instance the step of printing a
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menu that was generated through an abstract process in Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1241–42 (Fed. Cir. 2016) and the mere
generic presentation of collected and analyzed data in Electric Power Group,
830 F.3d at 1354 (Fed. Cir. 2016)).
Even when viewed in combination, the layout generation system
recited in claim 1 does no more than automate the mental or manual act of
drawing a floor plan, using the computer components as a tool. Appellant
argues that the claims do not “merely automate conventional human tasks,”
but instead “solve[] a problem that the known systems are overly
complicated and have too much information,” such as dimensions and
proportions of the rooms in the floor plan. Appeal Br. 21, 25. Appellant’s
argument as well as the Specification, however, show that there is no change
to the memory and processor that are recited in the claim as automating the
abstract ideas. Appeal Br. 21, 22 (stating that the Specification “compares
the improvement in the user friendliness with conventional techniques” and
arguing that the improvement reduces “too much information” in an existing
floor plan drawing and eases the difficulty in the editing of such a drawing);
Reply Br. 6, 8 (stating that “the improvement results in greater user
friendliness and a simplified layout” and that “is a big improvement in user
friendliness”). Thus, the claims do not improve computer functionality or
other technology. See, e.g., Trading Technologies Int’l v. IBG, Inc., 921
F.3d 1084, 1093 (Fed. Cir. 2019) (using a computer to provide a trader with
more information to facilitate market trades improved the business process
of market trading, but not the computer); MPEP 2106.05(a)(I) (discussing,
among other cases, FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095
(Fed. Cir. 2016) (accelerating a process of analyzing audit log data is not an
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improvement when the increased speed comes solely from the capabilities of
a general-purpose computer) and Credit Acceptance Corp. v. Westlake
Services, 859 F.3d 1044, 1055 (Fed. Cir. 2017) (using a generic computer to
automate a process of applying to finance a purchase is not an improvement
to the computer’s functionality)). Accordingly, the claim as a whole does
not integrate the recited judicial exception into a practical application and
the claim is directed to the judicial exception.
Step 2 B–Inventive Concept
Because we determine that claims 1–10 and 12–16 are directed to an
abstract idea and they do not include additional elements that integrate the
abstract idea into a practical application, we look to whether each claim
provides an inventive concept, i.e., adds a specific limitation beyond the
judicial exception that is not “well-understood, routine, conventional” in the
field. Memorandum, 84 Fed. Reg. at 56. There is, however, none other than
the abstract idea itself (i.e., collecting, manipulating, and displaying a floor
plan drawing) and the generic components (the conventional processor and
memory) in the claims. See Aatrix Software, Inc. v. Green Shades Software,
Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) (holding that “the ‘inventive
concept’ cannot be the abstract idea itself”). We agree with the Examiner
that a generic computer that may be programmed to carry out tasks and
abstract ideas is well known in the art. Final Act. 5; Ans. 3, 4.
Appellant’s statement that the claims identify “a technical problem for
generating layout information” and “solve[] a problem that the known
systems are overly complicated and have too much information” (Appeal Br.
21, 25) is consistent with our determination that the claims are directed to an
abstract idea of drawing a floor plan that can be carried out mentally or
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manually with pen and paper. Appellant also argues that when drawing a
floor plan in accordance with the claims, “the user does not need to know
room dimensions and does not need a blueprint.” Id. at 22. The claims,
however, do not recite a user’s knowledge. The claims are open-ended and
do not exclude room dimensions and other parameters a blueprint may have.
We emphasize that mental processes remain unpatentable even when
automated to reduce the burden on the user of what once could have been
done with pen and paper. CyberSource, 654 F.3d at 1375 (“That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson.”)
Accordingly, we conclude that method claims 1–10 and 12–16 are
directed to patent ineligible subject matter under 35 U.S.C. § 101. Claims
1–10 and 12–16 are directed to an abstract idea and do not recite additional
elements that integrate the abstract idea into a practical application. Further,
the claims preempt the recited techniques to manipulate a floor plan drawing
and are patent ineligible under section 101. Alice, 573 U.S. 208, 216 (“We
have described the concern that drives this exclusionary principle as one of
pre-emption.”) (citing Bilski v. Kappos, 561 U.S. 593, 612 (2010)
(“[U]pholding the patent ‘would pre-empt use of this approach in all fields,
and would effectively grant a monopoly over an abstract idea.’”)).

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CONCLUSION
The Examiner’s rejection is affirmed.
In summary:
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–10, 12–16 101 Eligibility 1–10, 12–16

FINALITY AND 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