Zhou BailiangDownload PDFPatent Trials and Appeals BoardMay 4, 20202018008825 (P.T.A.B. May. 4, 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. 14/957,425 12/02/2015 Zhou Bailiang 31730/22447-00 5639 12716 7590 05/04/2020 Marshall, Gerstein & Borun LLP (Google) 233 South Wacker Drive 6300 Willis Tower Chicago, IL 60606-6357 EXAMINER SCHNEIDER, PAULA LYNN ART UNIT PAPER NUMBER 3668 NOTIFICATION DATE DELIVERY MODE 05/04/2020 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): mgbdocket@marshallip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ZHOU BAILIANG Appeal 2018-008825 Application 14/957,425 Technology Center 3600 Before CHARLES N. GREENHUT, JAMES P. CALVE, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, 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 1–3, 5–9, and 11–23. Claims 4 and 10 were canceled during prosecution. Claims Appendix. 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. Appellant identifies the real party in interest as Google, LLC. Appeal Br. 3. Appeal 2018-008825 Application 14/957,425 2 CLAIMED SUBJECT MATTER The claims are directed to a system and a method for aligning visual indicators of map elements. Spec. ¶ 1. Claim 7, reproduced below, is illustrative of the claimed subject matter: 7. A computer-implemented method for rearranging map labels corresponding to map elements for display along a route within a digital map, the method comprising: obtaining map data for generating a digital map of a geographic area at a certain zoom level, including obtaining an indication of a first placement of map labels corresponding to map elements included in the digital map; displaying the digital map with the first placement of the labels in a first instance; receiving a request for a route between an origin and a destination; obtaining route data in response to the request, the route data defining the route traversing the geographic area; displaying the digital map of the geographic area at the same zoom level, in a second instance, with a second placement of the map labels, including: displaying the route on the digital map; and repositioning a subset of the map labels corresponding to map elements that intersect the route at one or more points so as to align the subset of the map labels with the route for visual emphasis. . Claims Appendix A-2–A-3. REJECTIONS Claims 1–3, 5–9, and 11–23 stand rejected under 35 U.S.C. § 101 as being directed to unpatentable subject matter. Final Act. 4. Appeal 2018-008825 Application 14/957,425 3 OPINION Patent Eligibility In issues involving subject matter eligibility, our inquiry focuses on whether the claims satisfy the two-step test set forth by the Supreme Court in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Supreme Court instructs us to “first determine whether the claims at issue are directed to a patent-ineligible concept,” id. at 216–18, and, in this case, the inquiry centers on whether the claims are directed to an abstract idea. If this initial condition is met, we then move to the second step, in which we “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.” Id. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Supreme Court describes the second step 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.’” Id. (quoting Mayo, 566 U.S. at 72–73). The USPTO published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance (“Guidance”), 84 Fed. Reg. 50 (Jan. 7, 2019).2 Under that guidance, we first look to whether the claim recites: 2 In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility, https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_ update.pdf. Appeal 2018-008825 Application 14/957,425 4 (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, and mental processes) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under “Step 2B,” 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 generally Guidance. ANALYSIS Claim Grouping Appellant argues the independent claims as a group for the purpose of the rejection under a judicial exception to § 101. Appeal Br. 15‒17. As to this rejection, we select claim 7 as representative of the group, and the remaining independent claims stand or fall with claim 7. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2018-008825 Application 14/957,425 5 Examiner’s Findings and Conclusion In the first step of the Alice inquiry, the Examiner rejects the claims, stating that the claims are drawn to the abstract idea of an “idea ‘of itself’ and ‘certain methods of organizing human activity’” similar to concepts that courts have held to be abstract ideas. Final Act. 8; Ans. 3–4. At Alice step 2, the Examiner additionally determines that the claims do not add a meaningful limitation to the abstract idea so as to amount to significantly more than the judicial exception because they implement the abstract idea on generic processors that perform generic computer functions. Final Act. 9– 10; Ans. 4–5. Analysis According to the Guidance Step One: Does Claim 7 Fall within a Statutory Category of § 101? We first examine whether the claim recites one of the enumerated statutory classes of subject matter, i.e., process, machine, manufacture, or composition of matter, eligible for patenting under 35 U.S.C. § 101. Claim 7 is drawn to a method, which is one of the statutory classes (i.e., a process) under 35 U.S.C. § 101. Step 2A, Prong One: Does Claim 7 Recite a Judicial Exception? We next look to whether the claim recites 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, and mental processes. In this instance, claim 7 recites steps that amount to mental processes and/or certain methods of organizing human activity by managing personal behavior involved in planning a route. Specifically, the claim recites: Appeal 2018-008825 Application 14/957,425 6 obtaining map data for generating a digital map of a geographic area at a certain zoom level, including obtaining an indication of a first placement of map labels corresponding to map elements included in the digital map; displaying the digital map with the first placement of the labels in a first instance; receiving a request for a route between an origin and a destination; obtaining route data in response to the request, the route data defining the route traversing the geographic area; displaying the digital map of the geographic area at the same zoom level, in a second instance, with a second placement of the map labels, including: displaying the route on the digital map; and repositioning a subset of the map labels corresponding to map elements that intersect the route at one or more points so as to align the subset of the map labels with the route for visual emphasis Although these steps are claimed as being done by a computer, the activities themselves are all capable of being performed by a human without a computer, and fall into the abstract idea of mental processes. See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.”); see id. at 1372–73 (holding that constructing and using a map of credit card numbers recited a mental process performable in the human mind); In re Villena, 745 F. App’x 374, 375–76 (Fed. Cir. 2018) (holding that claims to generating a map-like display for a geographic region with icons of residential properties and their values recited an abstract idea). We therefore determine that claim 7 recites the abstract idea of mental processes, which is a judicial exception to patent-eligible subject matter. Appeal 2018-008825 Application 14/957,425 7 Step 2A, Prong Two: Does Claim 7 Recite Additional Elements that Integrate the Judicial Exception into a Practical Application? Following our Office guidance, having found that claim 7 recites a judicial exception, we next determine whether the claim recites “additional elements that integrate the exception into a practical application” (see MPEP §§ 2106.05(a)–(c), (e)–(h)). See Guidance, 84 Fed. Reg. at 54. As noted above, each of the claimed steps is recited as being performed by a computer device specified at a high level of generality and, does not result in an improvement in the functioning of a computer or other technology or technological field. The recitations of the generic structures with which the recited steps are performed are merely instructions to use a generic computer system as a tool to perform the abstract idea. Thus, claim 7 does not apply, rely on, or use the abstract idea in a manner that imposes a meaningful limit on those steps. Rather, the claim is simply a drafting effort designed to monopolize the abstract idea steps of claim 7. See MPEP § 2106.05(f) (“Use of a computer or other machinery in its ordinary capacity for . . . tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea . . . does not provide significantly more.”). In short, the additional elements discussed above: (1) do not result in an improvement to the functioning of a computer or other technology; (2) are not any particular machine; (3) do not effect a transformation of a particular article to a different state; and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §§ 2106.05(a)–(c), (e)– (h); Guidance, 84 Fed. Reg. at 55. Consequently, the claimed invention does not integrate the abstract idea into a “practical application.” Appeal 2018-008825 Application 14/957,425 8 For these reasons, the additional elements of claim 7 do not integrate the judicial exception into a practical application. Thus, claim 7 is directed to an abstract idea, which is a judicial exception to patent-eligible subject matter under 35 U.S.C. § 101. Step 2B: Does Claim 7 Recite an Inventive Concept? We next consider whether claim 7 recites any additional elements, individually or as an ordered combination, that transform the abstract idea into a patent-eligible application, e.g., provide an inventive concept. Alice, 573 U.S. at 217–18. Claim 7 consists wholly of steps that recite abstract ideas that are performed by a generic computer and thus does not recite any such additional elements. See Spec. ¶¶ 48–56 (describing generic computer components of a system 700 used to perform the claimed method). According to Office guidance, under Step 2B, “examiners should . . . evaluate the additional elements individually and in combination . . . to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).” See Guidance, 84 Fed. Reg. at 56 (emphasis added). Thus, the second step of the inquiry (Step 2B) looks at the additional elements in combination. See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”). As noted above, the computer is invoked as a conventional tool. Apart from being used to perform the abstract idea itself, the generic computer system components only serve to perform well-understood functions (e.g., obtaining, receiving, repositioning, transmitting, etc.). See Appeal 2018-008825 Application 14/957,425 9 FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (“[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent- eligible subject matter.”). In our view, claim 7 fails to add a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field, but instead “simply appends well- understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.” See Guidance, 84 Fed. Reg. at 56. That is, claim 7 is not directed to a specific application designed to achieve an improved technological result, as opposed to being directed to merely ordinary functionality of the above- recited additional elements to apply an abstract idea. For the reasons discussed above, we find no additional element, alone or in combination, recited in claim 1 that contains any “inventive concept” or adds anything “significantly more” to transform the abstract concept into a patent-eligible application. See Alice, 573 U.S. at 221. Appellant’s Contentions Appellant contends that the Examiner failed to consider the claim elements as a whole and rather “separately compared individual steps of claim 7 . . . to different Federal Circuit decisions.” Appeal Br. 15. Although it is true that the Examiner analogized each step to various Federal Circuit decisions that determined similar steps to recite abstract ideas, the Examiner did find that the claim as a whole is directed merely to an idea itself or organizing human activity. The Examiner further states that “[a]ll of the elements in the claims amount to no more than automating collection, Appeal 2018-008825 Application 14/957,425 10 comparison and analyzation of data which the precedential courts have recognized as well-understood, routine and conventional.” Final Act. 9. Appellant also argues that the claims amount to a “particular solution to the technical problem [of] placing labels on a digital map [that] includes displaying a route on a digital map and repositioning a subset of the map labels corresponding to map elements that intersect the route at [at] least one point so as to align the subset of the map labels with the route.” Appeal Br. 16. The claims, however, do not represent any particular solution to the problem. At best they identify a potential problem with labels not falling onto a route and then simply move those labels accordingly. Appellant’s claims do not specify any particular manner in which this is done, nor does the Specification explain why this alleged problem requires any particular solution in terms of hardware, software, or other technology. At their core, the claims merely reposition labels on a map to align the labels with a route, which recites an abstract idea as discussed above. They provide in a digital map what drivers encounter in the physical world, namely, street signs and other directional indicia positioned along a route. We agree with the Examiner’s determination that this process involves organizing human activity and mental processes because the claims essentially amount to computer automation of what also could be done with an actual map. For instance, a user could take a map and physically highlight a chosen route on the map. The user could then take repositionable markers or arrows already on the map and relocate them closer to the route for better visual appearance or simply write in the street names and other map labels along a route. The claims do not recite any particular method for repositioning the labels and simply automate what could easily be done by a Appeal 2018-008825 Application 14/957,425 11 human with an actual map and movable markers or pen and paper as a mental process. As to the dependent claims, these claims mostly recite which and where the labels are repositioned, for example along the lengthwise edge of the route. In other words, they recite additional features of the abstract ideas recited in the independent claims. Again, there is no particular technical solution for moving the labels as claimed, merely automating what could otherwise be done by a human with a computer. As to claim 22, this claim merely identifies which labels are movable in the same manner that a human using a physical map can identify which markers are movable and which ones are actually printed on the map and, thus, cannot be moved. In sum, the claims do not recite any particular manner of moving the labels using some specific computer routine, but merely use a computer to accomplish what can otherwise be done by a human with a physical map. Appellant’s arguments that summarize what these claims recite and allege that they recite “significantly more” than an abstract idea (Appeal Br. 17–18) are not persuasive. See 37 C.F.R. § 41.37(c)(1)(iv); BSG, 899 F.3d at 1291 (“As a matter of law, narrowing or reformulating an abstract idea does not add ‘significantly more’ to it.”); see RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract.”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”); Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) (“An abstract idea can generally be described at different levels of abstraction.”). Appeal 2018-008825 Application 14/957,425 12 As such, we are not persuaded of error in the Examiner’s rejection. CONCLUSION The Examiner’s rejection is AFFIRMED. More specifically, DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 5–9, 11–23 101 Eligibility 1–3, 5–9, 11–23 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 Copy with citationCopy as parenthetical citation