Ex parte Boss

• Decision Date: 29 October 2021
• Docket Number: Appeal 2021-000432,Application 15/420,142
• Parties: Ex parte GREGORY J. BOSS, JAMES E. BOSTICK, JOHN M. GANCI JR., and MARTIN G. KEEN Technology Center 3600
• Court: Patent Trial and Appeal Board

Ex parte GREGORY J. BOSS, JAMES E. BOSTICK, JOHN M. GANCI JR., and MARTIN G. KEEN Technology Center 3600

Appeal 2021-000432

Application 15/420, 142

United States Patent and Trademark Office, Patent Trial and Appeal Board

October 29, 2021

FILING DATE: 01/31/2017

Before CYNTHIA L. MURPHY, BRADLEY B. BAYAT, and AMEE A. SHAH, Administrative Patent Judges.

DECISION ON APPEAL

SHAH, ADMINISTRATIVE PATENT JUDGE.

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), the Appellant^[1] appeals from the Examiner's final decision to reject claims 1-7 and 9-23, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM IN PART.

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CLAIMED SUBJECT MATTER

The Appellant's invention "relates generally to an improved computer system and, more specifically, to a method and apparatus for predicting an arrival of a guest at a hotel room, [and s]till more particularly, ... for predicting the arrival of a guest at a hotel room using a keyless entry system." Spec. ¶ 1.

Claims 1, 10, and 19 are the independent claims on appeal. Claims 1 and 19 are illustrative of the subject matter on appeal and are reproduced below (lettered bracketing added for reference).

1. A method for predicting a hotel room arrival, the method comprising: a hotel computer system implementing an arrival predictor, the arrival predictor comprising a cognitive system, an action generator, a guest unlock history database and a hotel unlock history database different than the guest unlock history database, the arrival predictor

[(a)] receiving calendar information for a guest from a mobile device for the guest of a hotel, wherein the calendar information is received while the guest is in the hotel

[(b)] predicting the hotel room arrival for the guest using the calendar information, wherein the hotel room arrival is for arrival of the guest at a hotel room of the hotel, wherein:

[(bl)] the cognitive system is in communication with the guest unlock history database, the hotel unlock history database, and the action generator; and

[(b2)] the cognitive system is configured to predict the hotel room arrival for the guest using the calendar information, the guest unlock history database, and the hotel unlock history database; and

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[(c)] responsive to predicting the hotel room arrival, performing an action in the hotel based on the hotel room arrival predicted for the guest, wherein the action is performed by the action generator;

wherein:

[(d)] the cognitive system uses the guest unlock history database to look for patterns of when the guest has historically unlocked their door;

[(e] the arrival predictor is in communication with a hotel door entry system;

[(f)] the hotel door entry system controls locking and unlocking of the hotel room;

[(g)] the mobile device establishes communication with the hotel door entry system;

[(h)] the hotel door entry system uses near field communication to communicate with the mobile device; and

[(i)] locking or unlocking of the hotel room is more responsive based on predicted hotel room arrival using the calendar information, the guest unlock history database, and the hotel unlock history database.

19. A computer program product for predicting a hotel room arrival, the computer program product comprising:

a non-transitory, computer-readable storage medium including instructions that are executable by one or more processors, the instructions comprising:

[(a)] first program code for receiving calendar information from a mobile device for a guest of a hotel, wherein the calendar information is received while the guest is in the hotel;

[(b)] second program code for predicting the hotel room arrival for the guest at a hotel room using the

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calendar information and a history of unlocks for the hotel room; and [(c)] third program code for performing an action in the hotel based on the hotel room arrival predicted for the guest;

wherein:

[(d)] the second program code uses the guest unlock history database to look for patterns of when the guest has historically unlocked their door; and

[(e] locking or unlocking of the hotel room is more responsive based on predicted hotel room arrival using the calendar information and the history of unlocks for the hotel room.

Appeal Br. 30-31, 35 (Claims App.).

REFERENCES

The prior art relied upon by the Examiner are:

Name	Reference	Date
Remenih et al. ("Remenih")	U.S. 2004/0160305 Al	Aug. 19, 2004
Lau et al. ("Lau")	U.S. 2013/0102283 Al	Apr. 25, 2013
Griffin et al. ("Griffin")	U.S. 2015/0073980 Al	Mar. 12, 2015
Perret	U.S. 2015/0324332 Al	Nov. 12, 2015
Isaacson	U.S. 2016/0300411 Al	Oct. 13, 2016
Mintz	U.S. 2017/0115018 A1	Apr. 27, 2017

REJECTIONS

Claims 19 and 20 stand rejected under 35 U.S.C. § 101 as being directed to a judicial exception without significantly more.

Claims 1-4, 9-13, 18, 19, and 21-23 stand rejected under 35 US.C. § 103 as being unpatentable over Mintz, Griffin, Remenih, and Lau.

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Claims 5-7, 14-16, and 20 stand rejected under 35 US.C. § 103 as being unpatentable over Mintz, Griffin, Remenih, Lau, and Isaacson.

Claim 17 stands rejected under 35 US.C. § 103 as being unpatentable over Mintz, Griffin, Remenih, Lau, and Perret.

OPINION

35 U.S.C. § 101 - Statutory Subject Matter

35 U.S.C. § 101 Framework

Section 101

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 U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 216 (2014).

In determining whether a claim falls within an excluded category, we are guided by the Court's two-part 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, 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 Court held that "a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula."). Having said that, the 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. (citations omitted) (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.").

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

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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 (quotation marks 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.

USPTO Section 101 Guidance

We are also guided by U.S. Patent and Trademark Office ("USPTO") Guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.Reg. 50 (Jan. 7, 2019) ("Guidance") and the October 2019 Update: Subject Matter Eligibility ("October 2019 Update"), incorporated into the Manual of Patent Examining Procedure §§ 2104-06, Rev. 10.2019 ("MPEP") in June 2020. "The guidance sets out agency policy with respect to the USPTO's interpretation of the subject matter eligibility requirements of 35 U.S.C....