INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Jan 1, 2021

2019003924 (P.T.A.B. Jan. 1, 2021)

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.
14/841,620 08/31/2015 Adi Botea YOR920150567US1(163-1006) 8849
49267 7590 01/01/2021
Tutunjian & Bitetto, P.C.
401 Broadhollow Road
Suite 402
Melville, NY 11747
EXAMINER
TRAN, ANHTAI V
ART UNIT PAPER NUMBER
2168
NOTIFICATION DATE DELIVERY MODE
01/01/2021 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):
docketing@tb-iplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ADI BOTEA, ELIZABETH DALY,
and AKIHIRO KISHIMOTO

Appeal 2019-003924
Application 14/841,620
Technology Center 2100

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“International Business Machines Corporation.” Appeal Br. 3.
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Application 14/841,620

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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention is a “method [that] includes incrementally
solving, by a processor-based journey plan incremental searcher, a current
journey planning request from a user.” Spec., abst. Claim 1, reproduced
below, is illustrative of argued subject matter.
1. A method, comprising:
incrementally solving, by a processor-based journey plan
incremental searcher, a current journey planning request from a
user, wherein said solving step includes:
performing a current search for at least one journey plan
that satisfies the current journey planning request by
accessing a database storing journey planning
information derived from results to a plurality of
previous journey planning requests;
storing, in the database, at least part of the information
discovered during the current search for responding to a
subsequent journey planning request; and
providing, on a display device, the at least one journey
plan to the user,
wherein multiple constraints are imposed on the at least one
journey plan that include minimizing transportation mode
changes using a maximum threshold for interchanges.
Appeal Br., Claims Appendix.
Rejections
Claims 1–7, 9, 10, and 17–19 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Shaam (US 2014/0351037 A1; Nov. 27, 2014) and
Scofield (US 2013/0046456 A1; Feb. 21, 2013). Final Act. 5–9.
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Claims 8, 11–16, and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Shaam, Scofield, and Bast (US 2011/0112759 A1;
May 12, 2011). Final Act. 9–12.
OPINION
All arguments are directed to the following claim limitation:
“minimizing transportation mode changes using a maximum threshold for
interchanges” (independent claims 1 and 19). Appeal Br. 10; see also id.
at 13 (“[C]laims 2–7, 9, 10, and 17–192 depend from claim 1 and . . . are
believed to be patentably distinct . . . for at least the same reasons.”), 17
(“[C]laims 8, 11–16, and 20 are patentably distinct . . . due to their
respective dependencies.”).
1. Appeal Brief does not address the Examiner’s reliance on
Shaam and Scofield
The Appeal Brief describes the rejection as applying only Shaam to
the claim limitation (id. at 10–13) and thus does not address the Examiner’s
reliance on Shaam and Scofield in combination (mapping Shaam to the
claimed “minimizing transportation mode changes” and Scofield to the
claimed “using a maximum threshold for interchanges”). Final Act. 5–6; see
also Ans. 5.
2. Reply Brief does not address the Examiner’s finding for
Shaam’s nonstop-travel option
The Reply Brief does not address the Examiner’s finding, presented in
the Answer, that Shaam’s nonstop-travel option also teaches (i.e., in addition
to Shaam’s other cited teachings) the claimed “minimizing transportation
mode changes.” Ans. 5. As claimed, the nonstop-travel option “minimiz[es]

2 Claim 19 is independent. Appellant contends claim 19 is patentably
distinct because of reciting the argued claim limitation. Appeal Br. 10.
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transportation mode changes” to zero changes by “using a maximum
threshold for interchanges” of zero interchanges.
That said, because the Examiner applies the nonstop-travel option to
only the claimed “minimizing transportation mode changes” (i.e., not also to
the claimed “using a maximum threshold for interchanges”), this finding is
not dispositive as to whether the Examiner finds the argued claim limitation
is obvious over the applied prior art. We will, therefore, address Appellant’s
timely contentions against Shaam and Scofield.
3. Appellant’s Contentions
Appellant contends Shaam teaches away from the claimed
“minimizing [of] transportation mode changes” because Shaam’s user can
select multiple travel modes and doing so “has the effect” of increasing
travel mode changes. Appeal Br. 10; see also Reply Br. 3–4. We are
unpersuaded of error.
A prior art reference does not teach away from a claim feature by
merely teaching an embodiment having an opposite result. Rather, the
reference must be considered in toto and for whether it discourages the claim
feature. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior
art’s mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed.”);
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A]
given course of action often has simultaneous advantages disadvantages[.
This] does not necessarily obviate motivation to combine.”). Appellant does
not show Shaam discourages the claimed “minimizing [of] transportation
mode changes.”
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We add that Shaam teaches both increasing and minimizing of travel
modes. Namely, Shaam allows users to select multiple travel modes
(increasing) or only one travel mode (minimizing). See e.g., Shaam, Fig. 1
(travel mode control 118).
Appellant also contends Shaam’s travel modes (118) are selected at
“the whim of the user” and therefore are not, as claimed, minimized via a
maximum threshold for interchanges. Appeal Br. 11–12. We are
unpersuaded of error.
The rejection reads the argued claim limitation on Shaam and Scofield
in combination and, in doing so, maps the at-issue claim feature (“using a
maximum threshold for interchanges”) to Scofield. Final Act. 5–6; see also
Ans. 5; supra 3, § 1. Thus, Appellant cannot overcome the rejection by
contending the at-issue claim feature distinguishes over Shaam. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (“One cannot show nonobviousness
by attacking references individually [if] the rejection [is] based on [a]
combination[] of references.”).
We add that the Examiner cites Scofield as teaching maximum
thresholds for travel mode interchanges, e.g., as teaching to “remove a travel
option . . . if [it] uses a park-and-ride location but there is no parking
availability . . . below a specified threshold.” Final Act. 6 (citing Scofield
¶¶ 37, 41, 69). The cited disclosures teach in pertinent part: “travel options
. . . may be assessed . . . based on time . . . to walk from the [park-and-ride]
location 525b to the embarkation location 522b” (Scofield ¶ 41); and
“select[ing] . . . travel options . . . based on a specified minimum and/or
maximum threshold” (id. ¶ 69). These disclosures evidence an
understanding, in the art, that travelers desire time thresholds (“travel
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options . . . based on a specified . . . maximum threshold”) such as a
maximum duration for an interchange (“time . . . to walk”) from one
transportation mode (“from the [park-and-ride] location 525b”) to a next
transportation mode (“to the embarkation location 522b”). In the Reply
Brief, Appellant contends these “time considerations and thresholds relating
thereto do not rise to a maximum threshold for interchanges.” Reply Br. 3.
This contention is untimely (see supra 3, § 1) and, even if it was timely, fails
to address whether Scofield’s above teachings evidence the proffered
understanding in the art.
OVERALL CONCLUSION
For the foregoing reasons, we are unpersuaded of error and therefore
affirm the Examiner’s decision to reject claims 1–20.
DECISION SUMMARY
Claims
Rejected 35 U.S.C. Basis Affirmed Reversed
1–7, 9, 10,
17–19 § 103 Shaam, Scofield
1–7, 9, 10,
17–19
8, 11–16, 20 § 103 Shaam, Scofield, Bast 8, 11–16, 20
Overall
Outcome 1–20
TIME PERIOD FOR 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