Ex Parte Holland et al

Patent Trial and Appeal Board

Nov 4, 2016

12256962 (P.T.A.B. Nov. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/256,962 10/23/2008
826 7590 11/08/2016
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
FIRST NAMED INVENTOR
Charles L. Holland
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
018360/345253 6193
EXAMINER
BITAR, NANCY
ART UNIT PAPER NUMBER
2669
NOTIFICATION DATE DELIVERY MODE
11/08/2016 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES L. HOLLAND, JACK D. LEVIS, STANLEY A.
ENGEL, VINCENT PAUL FIORA Y ANTE, STEVEN L. SMITH, KELLI
M. FRANKLIN-JOYNER, JEFFREY L. WINTERS, JOHN A. OLSEN III,
and MARK DAVIDSON
Appeal2015-004963 1
Application 12/256,962
Technology Center 2600
Before JEAN R. HOMERE, ADAM J. PYONIN, and
AARON W. MOORE, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's non-final rejection of claims 1-12 and 16-20. App. Br. 1.
Claims 13-15 have been canceled. Claims App 'x. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as United Parcel Service of
America, Inc. App. Br. 2.
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Application 12/256,962
Appellants ; Invention
Appellants' invention is directed to a method for determining a
distance to be walked by a delivery vehicle driver. Spec. i-f 5. In particular,
upon acquiring a satellite image (100) including a drop off location ( 40), and
a street (50) adjacent thereto, a user defines on the satellite image (100) a
path (20) corresponding to the path the driver is to walk from the vehicle to
the drop off location ( 50). Id. i-f 27, Fig. 1. Subsequently, the defined path
(20) is entered into a virtual globe program, which calculates the length (2)
of the path (20) corresponding to the walking distance thereof. Id.
Representative Claim
Independent claim 1 is representative, and reads as follows:
1. A method of determining a distance to be walked by a delivery
vehicle driver, said method comprising the steps of:
providing a satellite image that comprises: (A) an image of a building
to which an item is to be delivered; and (B) an image of a street
adjacent said building;
receiving input, via one or more processors, from a user defining a
path, within said image, that corresponds to an anticipated path that
said delivery vehicle driver will walk from a delivery vehicle to an
item drop-off point when delivering said item to said building; and
determining, via the one or more processors, a length of said path.
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Application 12/256,962
Rejections on Appeal
Claims 1-12 stand rejected under 35 U.S.C. § 101 as being directed to
nonstatutory subject matter.
Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Matsumoto et al. (US 2005/0021227
Al; Jan. 27, 2005) and Yang (US 2007/0150375 Al; June 28, 2007).
Claims 16-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Matsumoto, Yang, and Gullo et al.
(US 7,962,421 B2; June 14, 2011).
ANALYSIS
We consider Appellants' arguments seriatim, as they are presented in
the Appeal Brief, pages 5-39, and the Reply Brief, pages 2-20. 2 We are
unpersuaded by Appellants' contentions. Except as otherwise indicated
hereinbelow, we adopt as our own the findings and reasons set forth in the
Examiner's Answer in response to Appellants' Appeal Brief. Ans. 3-12.
However, we highlight and address specific arguments and findings for
emphasis as follows.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed Oct. 3, 2014) ("App. Br."), the Reply Brief
(filed Mar. 31, 2015) ("Reply Br."), the Non-Final Action (mailed July 28,
2014), and the Answer (mailed Feb. 3, 2015) ("Ans.") for the respective
details. We have considered in this Decision only those arguments
Appellants actually raised in the Briefs. Any other arguments Appellants
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
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Application 12/256,962
Non-Statutory Subject Matter Rejection
Appellants argue the Examiner erred in concluding that claims 1-12
are directed to the "abstract idea of receiving input from a user defining a
path by using multiple steps wherein these steps may be performed by a
person using a subjective mental activity." Reply Br. 2. According to
Appellants, the Examiner has not provided any factual evidence to
substantiate the conclusion that the claims are directed to an abstract idea,
nor has the Examiner responded to the arguments provided in the Appeal
Brief. Id. 2-3. These arguments are not persuasive.
The U.S. Supreme Court provides a two-step test for determining
whether a claim is directed to patent-eligible subject matter under 35 U.S.C.
§ 101. See Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347 (2014).
First, we determine whether the claims at issue are directed to one of the
four statutory categories of invention (i.e., process, machine, article of
manufacture, or composition of matter). Because claims 1-12 are directed
to a method, they satisfy the first prong of the test. Second, we determine
whether the claims are directed to one or more judicial exceptions (i.e., laws
of nature, natural phenomena, and abstract ideas). Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)).
We do not agree with Appellants that the Examiner has not provided a
"clear rationale supporting the determination that an abstract idea has been
claimed" pursuant to MPEP 2106(II)(B)(2). App. Br. 5-6; Reply Br. 2. In
the Answer, the Examiner expounds upon the initial conclusion that the
claims are directed to an abstract idea because they relate to steps performed
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Application 12/256,962
by a person using subjective mental activity. Ans. 3--4, 10. In particular, the
Examiner explains that:
For example, the step of receiving can be implemented by a
user using a mouse or a pen to mark the anticipated path to be walked
by the driver on a displayed/printed map and the determining step can
be implemented by the user measuring the length on the display using
a scale.
Ans. 10.
Thus, the Examiner submits that the claims are directed to a method
of organizing human activity, whereby a human manually draws a path on a
printed map, and subsequently measures the length of the path with a scale.
Accordingly, the Examiner has provided the requisite rationale in support of
the abstract idea rejection. Although Appellants seek to distinguish
generally the claimed method from the four examples of abstract ideas
(namely methods of organizing human activities, abstract ideas per se,
mathematical relationships, and mathematical formulas) referenced in Alice,
Appellants have not directly addressed the cited rationale provided by the
Examiner. App. Br. 7-21; Reply Br. 2-13. We note nonetheless that the
notion of calculating the length of a path corresponding to a distance to be
travelled by car or by foot is a commercial practice in our economic system
that is well known and long prevalent. We further note that because such
calculation of length of the path as recited in the claims encompasses any
and all manners of achieving such end, the claim pre-empts the idea itself so
that others cannot practice it. Additionally, we note that the mere use of a
generic computer recited in the claim to calculate the length of the path does
not transform the abstract idea into a patent-eligible invention. See Alice,
134 S. Ct. at 2357. Accordingly, we sustain the Examiner's rejection of
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claim 1, as well as claims 2-12 depending therefrom, as being directed to
nonstatutory subject matter.
Obviousness Rejections
Appellants argue that the combination of Matsumoto and Yang does
not render claims 1-12 unpatentable. App. Br. 22. In particular, Appellants
argue that Matsumoto fails to teach or suggest receiving an input from a user
defining a path within an image. Id. at 23. According to Appellants,
Matsumoto teaches a user entering a final destination in a navigation system
to determine the most suitable route to a parking lot closest to the final
destination. Id. at 23-25 (citing Matsumoto 82). Appellants submit that
although the navigation system may also determine the walking route from
the parking lot to the destination, such a parking lot is more appropriate for
visitors of a department store, as opposed to a drop off point for delivering
items to the building. Id. at 25 (citing Matsumoto 123). Further, Appellants
argue that Yang's disclosure of providing a route from a user's home to a
food pick up location does not cure the noted deficiencies of Matsumoto. Id.
at 25 (citing Yang 18, 66, 67). These arguments are not persuasive.
We agree with the Examiner that Matsumoto's disclosure of a user
selecting a parking lot near a department store, as well as the walking
distance from the parking lot to the store, teaches or suggests the user
defining a path therebetween. Ans. 10 (citing Matsumoto 104, 105). We
further agree with the Examiner that Yang's disclosure of a satellite map
including the depiction of a user's point of origin, a food pick up location,
and route (570) therebetween selected by the user, teaches the user defining
the path on a satellite image. Id. at 27 (citing Yang 79). We therefore agree
with the Examiner that the combination of Matsumoto and Yang would have
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predictably resulted in a user defining a route between a point of origin (i.e.
the parking lot) and a destination point (i.e. the delivery drop off point) on a
satellite image, wherein the route represents the walking path therebetween,
and the walking distance corresponds to the length thereof. Although the
route between the parking lot and the department store is more suitable to
visitors, nothing in the claim restricts the delivery drop off point to a
particular building entry or parking lot. Accordingly, we are not persuaded
of error in the Examiner's obviousness rejection of claim 1.
Regarding the rejection of claims 2-12 and 16-20, to the extent
Appellants have either not presented separate patentability arguments or
have reiterated substantially the same arguments as those previously
discussed for patentability of claim 1 above, those claims fall therewith. See
37 C.F.R. § 41.37(c)(l)(vii). Further, to the extent Appellants have raised
additional arguments for patentability of these claims, we find that the
Examiner has rebutted in the Answer each and every one of those arguments
by a preponderance of the evidence. Answer 6-9, 11, and 12. We adopt the
Examiner's findings and underlying reasoning, which we incorporate herein
by reference. Because Appellants have failed to persuasively rebut the
Examiner's findings regarding the rejections of claims 2-12 and 16-20,
Appellants have failed to show error in the Examiner's rejection of these
claims.
DECISION
We affirm the Examiner's nonstatutory subject matter rejection under
35 U.S.C. § 101 of claims 1-12. We also affirm the Examiner's rejections
under 35 U.S.C. § 103(a) of claims 1-12 and 16-20.
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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)(l )(iv).
AFFIRMED
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