Martin, Douglas Raymond. et al.

Patent Trials and Appeals Board

Mar 9, 2020

14703950 - (D) (P.T.A.B. Mar. 9, 2020)

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.
14/703,950 05/05/2015 Douglas Raymond Martin 83522004 8331
28395 7590 03/09/2020
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
MPAMUGO, CHINYERE
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
03/09/2020 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS RAYMOND MARTIN and
MARK ANTHONY ROCKWELL
Appeal 2018-007816
Application 14/703,950
Technology Center 3600
Before ADAM PYONIN, NABEEL U. KHAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
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 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 Ford Global
Technologies, LLC. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system comprising:
a processor configured to:
receive a user-input destination;
receive advertiser selection criteria;
determine an advertiser route that includes an advertiser
location, alternative to a fastest or shortest route to the
destination, based on the advertiser selection criteria;
present the advertiser route to a vehicle occupant;
receive an occupant decision accepting or avoiding the
advertiser route; and
augment an eventual trip cost based on the occupant
decision.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Prada Gomez US 8,630,897 B1 Jan. 14, 2014
O’Sullivan US 8,660,894 B2 Feb. 25, 2014

REJECTIONS
1. Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to
a judicial exception to patentable subject matter. Final Act. 3–6.
2. Claims 1–20 stand rejected under 35 U.S.C. § 103 as
unpatentable over Prada Gomez and O’Sullivan. Final Act. 7–14.
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OPINION
Rejection under 35 U.S.C. § 101
Legal Principles
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, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. 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.”).
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
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(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 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 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.”).
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 (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. (quoting Mayo, 566 U.S. at 77).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The United State Patent and Trademark Office published revised
guidance on the application of § 101 (2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)) (“2019 Guidance”) and
recently, published an update to that revised guidance (October 2019 Patent
Eligibility Guidance Update, 84 Fed. Reg. 55,942) (jointly referred to as
“Guidance”). Under the Guidance, in determining whether a claim falls
within an excluded category, we first look, under step 2A of the Guidance,
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)).
See 2019 Guidance 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then move to step
2B of the Guidance and look to whether the claim:
(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 2019 Guidance 84 Fed. Reg. at 56.
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Prong One of Step 2A
Under prong 1 of step 2A, we first look to whether the claim recites
any judicial exceptions, including certain groupings of abstract ideas (i.e.,
mathematical concepts, certain methods of organizing human activities, or
mental processes). 2019 Guidance, 84 Fed. Reg. at 52–54. To this end we
note that claim 1 recites (1) “a processor configured to” (2) “receive user-
input destination” (3) “receive advertiser selection criteria” (4) “determine
an advertiser route that includes an advertiser location, alternative to a
fastest or shortest route to the destination, based on the advertiser selection
criteria,” (4) “present the advertiser route to a vehicle occupant,” (5)
“receive an occupant decision accepting or avoiding the advertiser route”
and (6) “augment an eventual trip cost based on the occupant decision.”
Several of these limitations are directed to data gathering and calculating.
For example, the limitations reciting “receiv[ing] user-input destination,”
“receiv[ing] advertiser selection criteria,” and “receive an occupant decision
accepting or avoiding the advertiser route” are data gathering steps that may
be performed by the human mind. The limitation reciting “determin[ing] an
advertiser route that includes an advertiser location, alternative to a fastest or
shortest route to the destination, based on the advertiser selection criteria” is
a step that requires calculating a route to a destination that includes a
particular location along the way (the advertiser location). Such calculation
of routes is a step that may be practically performed in the human mind.
Similarly, the step of “augment[ing] an eventual trip cost based on the
occupant decision” involves mathematical calculations that may be
performed mentally by, for example, adding or subtracting a certain amount
from a trip cost. See Spec. ¶¶ 42, 68.
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Mental processes are a category of activities that the Guidance
recognizes as constituting an abstract idea. See Guidance, 84 Fed. Reg. at
52. Thus, under prong one of step 2A we determine the claims recite an
abstract idea.
Prong Two of Step 2A
Under prong 2 of step 2A of the Guidance we determine whether the
claim as whole integrates the recited abstract idea into a practical application
of the abstract idea. A claim that integrates a judicial exception into a
practical application will 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 judicial
exception. To evaluate whether the claims integrate the abstract idea into a
practical application, we identify whether there are any additional elements
recited beyond the abstract idea, and evaluate those additional elements
individually and in combination.
Some exemplary considerations laid out by the Supreme Court and the
Federal Circuit indicate that an additional element that integrates an abstract
idea into a practical application can include (i) an improvement in the
functioning of a computer or to another technological field, (ii) an
application of the judicial exception with, or by use of, a particular machine,
(iii) a transformation or reduction of a particular article to a different state or
thing, or (iv) a use of the judicial exception in some other meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment. See MPEP § 2106.05(a)–(c), (e)–(h).
Reviewing the claim limitations as a whole, we determine the claim
does not recite additional elements that integrate the abstract idea into a
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practical application. In particular we find that the claim limitations do not
improve the functioning of a computer or other technological field. Instead
the technological elements of the claim simply link the mental processes to
the technological environment of networks and computers.
The limitations that we did not identify above as reciting mental steps
include the recited “processor,” and “present[ing] the advertiser route to a
vehicle occupant.” As to the “processor,” neither the claim nor Specification
indicate any improvements to the functioning of the processor. Instead, as
claimed, the processor is used in its ordinary manner to receive inputs and
perform calculations such as determining a route to a destination. The step
of “present[ing] the advertiser route to a vehicle occupant” involves
displaying to the user the result of determining a route to a destination which
is directed to insignificant post-solution activity. See Electric Power Group,
LLC, v. Alstom, 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“[M]erely selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental processes,
whose implicit exclusion from § 101 undergirds the information-based
category of abstract ideas”).
Appellant argues
the claim solves the problem of getting a user to drive or use
a route affiliated with one or more advertisers, by
supplementing or augmenting a cost associated with a ride if
the advertiser-associated route is taken. Applicant is unaware
of any instance where this was being done in 2015, and this
certainly crosses the bar for “atypical” or “uncommon”
solution.
Appeal Br. 6. Here we note that “getting a user to drive or use a route
affiliated with one or more advertisers” refers to the abstract idea itself. An
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abstract idea, even if novel, is still an abstract idea. Although in step 2B we
search for an “inventive concept,” the analysis is not an evaluation of
novelty or non-obviousness, but rather a search for “‘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, 573 U.S. at 217–18. A novel and nonobvious claim directed
to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566
U.S. at 90.
Step 2B of the Guidance
Under step 2B of the Guidance we analyze the claims to determine
whether they provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception itself).
Considerations that are evaluated with respect to step 2B include
determining whether the claims as a whole add a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field.
We determine that the claimed “processor” operates in a well-
understood, routine, and conventional manner. For example, the
Specification describes the processor as “control[ing] at least some portion
of the operation of the vehicle-based computing system.” Spec. ¶ 17. The
processor is connected to storage (Spec. ¶ 17), is connected to various input
devices (Spec. ¶ 18), and outputs to a display and vehicle’s speakers (Spec.
¶ 19). We find this description to be consistent with the well-understood,
routine, conventional uses of processors in modern day vehicles.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1 under 35 U.S.C. § 101, and also claims 2–14 and 16–21, for which
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Appellant does not make any additional arguments. See Appeal Br. 13, 14,
18, 19.
Rejection under 35 U.S.C. § 103
Claim 1 recites “determine an advertiser route that includes an
advertiser location, alternative to a fastest or shortest route to the destination,
based on the advertiser selection criteria.” The Examiner finds Prada
Gomez teaches the aforementioned disputed limitation. Final Act. 7 (citing
Prada Gomez 8:25–33, 10:28–36); Ans. 5. Appellant argues that in Prada
Gomez,
[t]here is no route that is an alternative to the fastest or shortest
route to the destination in Prada Gomez, and there is not
“avoidance” of the route (that is, the user can elect not to use
the coupon, but this is not “avoiding” a particular route, this is
avoiding the destination and offer entirely.)
Appeal Br. 7.
We are persuaded by Appellant’s arguments. Prada Gomez relates to
“arranging for free or discounted transportation to an advertiser’s business
location.” Prada Gomez, Abstract. Prada Gomez explains that advertisers
may designate bids based on the cost of transporting a customer to their
business. Prada Gomez, 8:17–19. Advertisers may place higher bids to
provide customers with a shorter travel time, by for example, offering
autonomous vehicle rides rather than public transportation rides. Prada
Gomez, 8:15–33. We do not discern from this description that Prada Gomez
teaches to “determine an advertiser route that includes an advertiser location,
alternative to a fastest or shortest route to the destination, based on the
advertiser selection criteria.” No alternative route is discussed in the relied
upon sections of Prada Gomez. Additionally, claim 1 recites the “advertiser
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location” as separate from the “destination.” In contrast, the Examiner
improperly relies on Prada Gomez’s single “business location” for teaching
both limitations. Ans. 5; see Innova/Pure Water, Inc. v. Safari Water
Filtration Sys., Inc., 381 F.3d 1111, 1119 (Fed. Cir. 2004) (“[W]hen an
applicant uses different terms in a claim it is permissible to infer that [the]
different terms [] reflect a differentiation in the meaning of those terms.”);
Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254
(Fed. Cir. 2010) (“Where a claim lists elements separately, ‘the clear
implication of the claim language’ is that those elements are ‘distinct
component[s]’ of the patented invention.” (alteration in original) (quoting
Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004))).
Thus, we do not sustain the Examiner’s rejection of claims 1–20 under
35 U.S.C. § 103.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–20 103 Prada Gomez,
O’Sullivan
1–20
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).
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AFFIRMED