Gibson, George Amos. et al.Download PDFPatent Trials and Appeals BoardMay 8, 202013435419 - (D) (P.T.A.B. May. 8, 2020) Copy Citation 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. 13/435,419 03/30/2012 George Amos Gibson 20111143-US-NP 2437 144759 7590 05/08/2020 Gibb & Riley, LLC FREDERICK W. GIBB, III 537 Ritchie Highway Suite 2F Severna Park, MD 21146 EXAMINER SCHEUNEMANN, RICHARD N ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 05/08/2020 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): Conduent.PatentDocketing@conduent.com support@gibbiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GEORGE AMOS GIBSON, MARINA THARAYIL, BARRY P. MANDEL, and POLYKARPOS PAVLIDIS ____________ Appeal 2019-002115 Application 13/435,419 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, MATTHEW S. MEYERS, and ALYSSA A. FINAMORE, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1, 2, 4, 6, 7, 9, 11, 12, 14, 16, 17, 19, and 21–28. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. Appeal 2019-002115 Application 13/435,419 2 THE INVENTION Appellant claims route planning systems, methods, and devices, and more particularly utilizing the purpose of the trip to refine user preferences when selecting between multiple possible routes. (Spec. ¶ 1). Claim 1 is representative of the subject matter on appeal. 1. A method of providing route guidance comprising: maintaining a plurality of user preferences within a non- volatile storage medium of a route guidance device; receiving a beginning location and an ending location of a trip from a user into said route guidance device; receiving a trip purpose relating specifically to said trip from said user into a dedicated trip purpose input field of said route guidance device; automatically generating multiple different routes between said beginning location and said ending location using said route guidance device; automatically filtering said user preferences by automatically selecting ones of said user preferences that match said trip purpose and automatically deselecting ones of said user preferences that do not match said trip purpose to create a subset of less than all of said user preferences that match said trip purpose without further input from said user to produce purpose-specific preferences of less than all said user preferences using said route guidance device; automatically changing a weighting priority of said purpose-specific preferences based on said trip purpose received from said user and without further input from said user to produce purpose-specific weighted preferences using said route guidance device; automatically ranking said multiple different routes by ranking routes that match more of said purpose-specific weighted preferences ahead of routes that match less of said purpose-specific weighted preferences to produce a ranked order, using said route guidance device; and automatically outputting said multiple different routes in said ranked order to said user from said route guidance device. Appeal 2019-002115 Application 13/435,419 3 THE REJECTION Claims 1, 2, 4, 6, 7, 9, 11, 12, 14, 16, 17, 19, and 21–28 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. ANALYSIS 35 U.S.C. § 101 REJECTION We will sustain the rejection of claims 1, 2, 4, 6, 7, 9, 11, 12, 14, 16, 17, 19, and 21–28 under 35 U.S.C. § 101. The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, . . . then ask, “[w]hat else is there in the claims before us?” To answer that question, . . . consider the elements of each 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. [The Court] described step two of this analysis as a search for an “‘inventive concept’”—i.e., 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 Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. The Federal Circuit has Appeal 2019-002115 Application 13/435,419 4 explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether ‘their character as a whole is directed to excluded subject matter.’” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335–36. In so doing we apply a “directed to” two-prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the judicial exception is integrated into a practical application. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019). The Examiner determines that the claims are directed to providing route guidance which includes collecting information, analyzing information to rank routes and outputting the rankings. (Final Act. 5). The Examiner determines the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not recite an improvement to another technology or technical field nor do they recite an improvement to the functioning of the computer itself. Id. The Specification describes that the claimed method provides route guidance and maintains a plurality of the user preferences within a non- volatile medium of at least one computerized device. (Spec. ¶ 3). The user preferences are categorized into different pre-established trip purposes. The method receives a beginning location and an ending location of a trip and a Appeal 2019-002115 Application 13/435,419 5 trip purpose. (Spec. ¶ 3). The user enters the point to point travel requirements and information about travel preferences (travel time, total waiting time, total fare, amount of walking involved, etc.). (Spec. ¶ 27). In response, a number of alternative routes are provided as output to the user. (Spec. ¶ 27). Therefore, the Specification discloses that information about the travel destination is entered by the user, that information is processed by the method to determine preferences and information is outputted in the form of alternative routes. As such, the Specification supports the Examiner’s determination that the claims recite collecting information, analyzing information, and outputting information. Consistent with this disclosure, claim 1 recites “receiving a beginning location” (receiving information), “receiving a trip purpose” (receiving information), “generating multiple different routes” (analyzing information), “filtering . . . user preferences” (analyzing information), “changing a weighting priority” (analyzing information) and “outputting said multiple different routes” (outputting information). As such, the recitations in claim 1 also support the Examiner’s determination that the claims recite collecting information, analyzing information, and outputting information. We thus agree with the Examiner’s findings that the claims are directed to collecting information, analyzing information, and outputting information. The Federal Circuit has treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (determining claims directed to certain arrangements involving Appeal 2019-002115 Application 13/435,419 6 contractual relations are directed to abstract ideas). Thus, we find that the claims recite the judicial exception of a mental process. Turning to the second prong of the “directed to test,” claim 1 merely requires a “route guidance device.” The Specification discloses that the route guidance device can be various computerized devices. (Spec. ¶ 9). The recitation of the words “route guidance device” does not impose “a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 52. We find no indication in the Specification, nor does Appellant directs us to any indication, that the operations recited in independent claim 1 invoke any inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See 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 find no indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record, short of attorney argument, that attributes any improvement in computer technology and/or functionality to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg. at 55. Appeal 2019-002115 Application 13/435,419 7 In this regard, the recitation of a route guidance device does not affect an improvement in the functioning of a computer or other technology, does not recite a particular machine or manufacture that is integral to the claims, and does not transform or reduce a particular article to a different state or thing. Id. Thus, claim 1 recites a judicial exception that is not integrated into a practical application, and claim 1 is directed to an “abstract idea.” Turning to the second step of the Alice analysis, because we find that the claims are directed to abstract ideas, the claims must include an “inventive concept” in order to be patent eligible, i.e., there must be an element or combination of elements that is sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself. See Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 72–73 ). The introduction of a computer into the claims does not alter the analysis at Alice step two. [T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implemen[t]” an abstract idea “on . . . a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur[e]” that Appeal 2019-002115 Application 13/435,419 8 provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 573 U.S. at 223 (alterations in original) (citations omitted). Instead, “the relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer.” Id. at 225. They do not. Taking the claim elements separately, the function performed by the route guidance device, i.e., computer, at each step of the process is purely conventional. Using a computer to retrieve, select, and apply decision criteria to data and modify the data as a result amounts to electronic data query and retrieval—one of the most basic functions of a computer. All of these computer functions are well-understood, routine, conventional activities previously known to the trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming.”). In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, “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.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Appellant’s claims add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis- Appeal 2019-002115 Application 13/435,419 9 access/display is equally generic and conventional or otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (holding the sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract); Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. The claims do not, for example, purport to improve the functioning of the route guidance device. As we stated above, the claims do not effect an improvement in any other technology or technical field. The Specification spells out different generic equipment and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of information access under different scenarios. (Spec. ¶ 9). In particular, the Specification discloses that the route guidance device may be a personal computer, personal digital assistant, cell phones, and global positioning system units having a non- volatile storage medium operatively connected to a processor. Thus, the claims at issue amount to nothing significantly more than instructions to apply the abstract idea of providing route guidance using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 226. Appeal 2019-002115 Application 13/435,419 10 We have reviewed all the arguments (Appeal Br. 19–28; Reply Br. 1– 6) Appellant has submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. § 101. We find that our analysis above substantially covers the substance of all the arguments, which have been made. However, for purposes of completeness, we will address various arguments in order to make individual rebuttals of the same. Appellant argues all of the claims as a group. (Appeal Br. 19). Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we limit our discussion to claim 1, and all other claims on appeal stand or fall together with claim 1. We are not persuaded of error on the part of the Examiner by Appellant’s argument that the claims do not attempt to preempt all ways of performing route guidance. (Appeal Br. 20). “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir.), cert. denied, 136 S. Ct. 701 (2015) (“[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract.”). And, “[w]here a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.” Ariosa, 788 F.3d at 1379. We are not persuaded that the claimed invention is analogous to the claimed invention in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). (Appeal Br. 21–22). The claims in McRO were Appeal 2019-002115 Application 13/435,419 11 directed to a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type. McRO, 837 F.3d at 1313. The McRO claims were directed to a patentable, technological improvement over the existing, manual 3-D animation techniques. The McRO claims used the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. There is no technical improvement recited in the instant claims. We are not persuaded of error on the part of the Examiner by Appellant’s argument that the claims are similar to the claims in BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). According to Appellant, the claims provide a technology-specific way to interact with the technology, which makes it easier for individuals using such technology. (Appeal Br. 22). Contrary to Appellant’s arguments, the Federal Circuit did not find that the claims in BASCOM recited an inventive concept because the claims recited a specific implementation of the abstract idea of filtering content. Rather, in BASCOM, the Federal Circuit followed the Supreme Court’s guidance for determining whether the claims recite an inventive concept set forth in Alice, 134 S. Ct. at 2357–60. In Alice, the Supreme Court explained that, under the second step of the patent-eligibility analysis, “the relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea of intermediated settlement on a generic computer.” 134 S. Ct. at 2359. The Supreme Court also provided examples of claims that represent more than instructions to implement an abstract idea on a generic computer, such as claims that purport to improve the functioning of the computer itself and Appeal 2019-002115 Application 13/435,419 12 claims that effect an improvement in any other technology or technical field. Id. at 2359–60. Turning to BASCOM, the Federal Circuit held “[t]he inventive concept described and claimed in the ’606 patent is the installation of a filtering tool at a specific location, remote from end-users, with customizable filtering features specific to each end user.” 827 F.3d at 1350. In determining this feature to be an inventive concept, the Federal Circuit explained that the remote location of a filtering tool having customizable user-specific filtering features provides the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on the ISP server and is a technical improvement over prior art ways of filtering content. Id. at 1350–51. Notably, the Federal Circuit specifically determined that “the claims may be read to ‘improve[] an existing technological process.’” Id. at 1351 (citing Alice, 134 S. Ct. at 2358). We agree with the Examiner that using a trip purpose to define a set of preferences does not involve a technology or technological process. (Ans. 5). As we stated above, there is no improvement to existing technology or technological process recited in claim 1. Appellant argues that because the claims change the way users interact with the menu screens of the computerized route guidance system, they cannot be considered as steps that could be performed mentally or on paper. (Appeal Br. 25). Specifically, Appellant argues that claim 1 very specifically alters menu selections of user preference screens within computerized route guidance systems based on a newly created input field. (Appeal Br. 25). This argument is not persuasive because the claim 1 does not recite menu screens. Appeal 2019-002115 Application 13/435,419 13 Appellant also argues that claim 1 recites a specific, structured graphic user interface having a dedicated trip purpose field paired with a prescribed functionality that resolves a specifically identified problem. (Appeal Br. 26). This argument is also not persuasive because claim 1 does not recite a structured graphic user interface. In view of the foregoing, we will sustain this rejection as directed to claims 1, 2, 4, 6, 7, 9, 11, 12, 14, 16, 17, 19, and 21–28. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting the appealed claims under 35 U.S.C. § 101. DECISION In summary: Claims Rejected 35 U.S.C. § Reference(s) /Basis Affirmed Reversed 1, 2, 4, 6, 7, 9, 11, 12, 14, 16, 17, 19, 21–28 101 Eligibility 1, 2, 4, 6, 7, 9, 11, 12, 14, 16, 17, 19, 21–28 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 Copy with citationCopy as parenthetical citation