Apple Inc.

Patent Trials and Appeals Board

Jul 1, 2020

2019007010 (P.T.A.B. Jul. 1, 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.
14/503,113 09/30/2014 Ian Aric Mondragon 18962-0889001 /
P23361US2
4124
26183 7590 07/01/2020
FISH & RICHARDSON P.C. (APPLE)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
TORRICO-LOPEZ, ALAN
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte IAN ARIC MONDRAGON, ASHISH AGARWAL,
RAHUL RAVIKUMAR, PHILIP STANGER, and
VOJISLAV SAMSALOVIC
__________

Appeal 2019-007010
Application 14/503,113
Technology Center 3600
__________

Before JAMES P. CALVE, BRETT C. MARTIN, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, Apple Inc.,1 appeals under 35 U.S.C. § 134(a) from the
Examiner’s final decision rejecting claims 1–43. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 Appellant refers to the applicant as set forth in 37 C.F.R. § 1.42. Appellant
identifies itself as the sole real party in interest. Appeal Br. 1.
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STATEMENT OF THE CASE
The Specification
The Specification’s “disclosure relates generally to location-based
services.” Spec. ¶2. The Specification explains:
Some mobile devices have features for determining a
geographic location. For example, a mobile device can include
a receiver for receiving signals from a global satellite system
(e.g., global positioning system or GPS). The mobile device can
determine a geographic location, including latitude and
longitude, using the received GPS signals. The mobile device
can then display the geographic location on a virtual map on a
display screen. The virtual map can be stored in various data
formats. The mobile device may visit a venue that includes
indoor space. Maps of indoor space may not be easily available.
Even when the maps are available, the maps may not be up to
date due to frequent changes to the indoor space, e.g., when a
store moves into or out of a mall causing floor plan to be
reconfigured. Even when the maps are up to date, indoor
navigation may be difficult or unavailable due to lack of accurate
GPS signals in the indoor space as well as lack of integration
between maps of outdoor space and maps of indoor space.
Id. ¶3. Thus, the Specification describes “[t]echniques for generating maps
of venues.” Id. ¶4.
The Rejected Claims
Claims 1–43 are rejected. Final Act. 1. No other claims are pending.
Id. Claims 1, 15, and 29 are independent. Appeal Br. 30–44. Claim 1 is
illustrative and reproduced below.
1. A method comprising:
receiving venue data by a venue data server from a venue
data provider computer, the venue data including a physical
feature and a conceptual feature, the physical feature including
a first data object describing a physical structure at a venue, the
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conceptual feature including a second data object describing an
entity that occupies or is associated with a portion of the venue;
receiving probe data, the probe data including application
launch data from one or more user devices, the probe data
indicating user activities in the venue and user movements in
the venue, and the application launch data indicating an
execution of one or more application programs on the one or
more user devices in the venue by the one or more user devices
in the venue;
enriching the venue data using the probe data including
the application launch data, including revising inconsistencies
in the venue data and adding information to the venue data by
matching the user activities with an attribute of the entity and
matching the user movements with the physical structure;
storing the enriched venue data on a storage device for
providing an indoor location service of the venue to a user
device; and
generating a computerized mapping product based on the
enriched venue data.
Id. at 30.
The Examiner’s Rejection
The Examiner rejected all pending claims under the judicial exception
to 35 U.S.C. § 101. Final Act. 2.
DISCUSSION
Patent Eligibility Framework
Section 101 provides that “[w]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title.” 35 U.S.C. § 101. However,
the Supreme Court has “long held that this provision contains an important
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implicit exception: [l]aws of nature, natural phenomena, and abstract ideas
are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
In analyzing patent-eligibility questions under the judicial exception
to 35 U.S.C. § 101, we “first determine whether the claims at issue are
directed to a patent-ineligible concept.” Alice, 573 U.S. at 218. If the claims
are determined to be directed to an ineligible concept, then 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, 77 (2012)).
On January 7, 2019, the Director issued 2019 Revised Patent Subject
Matter Eligibility Guidance (“Revised Guidance”), which explains how the
Director directs that patent-eligibility questions under the judicial exception
to 35 U.S.C. § 101 be analyzed. 84 Fed. Reg. 50–57; see also October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.ddf).
Per the Revised Guidance, the first step of Alice (i.e., Office Step 2A)
consists of two prongs. In Prong One, we must determine whether the claim
recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural
phenomenon. 84 Fed. Reg. at 54 (Section III.A.1.). If it does not, the claim
is patent eligible. Id. With respect to the abstract idea category of judicial
exceptions, an abstract idea must fall within one of the enumerated
groupings of abstract ideas in the Revised Guidance or be a “tentative
abstract idea,” with the latter situation predicted to be rare. Id. at 51–52
(Section I, enumerating three groupings of abstract ideas),
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54 (Section III.A.1., describing Step 2A Prong One), 56–57 (Section III.C.,
explaining the identification of claims directed to a tentative abstract idea).
If a claim does recite a judicial exception, we proceed to Step 2A
Prong Two, in which we determine if the “claim as a whole integrates the
recited judicial exception into a practical application of the exception.” Id.
at 54 (Section II.A.2.). If it does, the claim is patent eligible. Id.
If a claim recites a judicial exception and fails to integrate it into a
practical application, we then proceed to the second step of Alice (i.e., Office
Step 2B). In that step, we evaluate the additional limitations of the claim,
both individually and as an ordered combination, to determine whether they
provide an inventive concept. Id. at 56 (Section III.B.). In particular, we
look to whether the claim:
• Adds a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the
field, which is indicative that an inventive concept may be
present; or
• simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which is
indicative that an inventive concept may not be present.
Id.
Independent Claim 1 and
Dependent Claims 2–9 and 12–14
Appellant argues against the rejection of claims 1–9 and 12–14
together. Appeal Br. 15–20. We choose claim 1 as representative. See 37
C.F.R. § 41.37(c)(1)(iv).
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Revised Guidance Step 2A Prong One
In Prong One of Step 2A, we determine whether claim 1 recites a
judicial exception (i.e., a law of nature, natural phenomenon, or abstract
idea).
The Examiner determined that “[t]he claims recite an abstract idea
instructing how to enrich (update/change) venue map data based on user
survey data.” Ans. 3; see also Final Act. 3. The Examiner determined that
this abstract idea is described by the following claim limitations:
receiving venue data from a venue data provider, the venue data
including a physical feature and a conceptual feature, the
physical feature including a first data object describing a
physical structure at a venue, the conceptual feature including a
second data object describing an entity that occupies or is
associated with a portion of the venue; receiving probe data, the
probe data including the probe data indicating user activities in
the venue and user movements in the venue; enriching the venue
data using the probe data, including revising inconsistencies in
the venue data and adding information to the venue data by
matching the user activities with an attribute of the entity and
matching the user movements with the physical structure; and
storing the enriched venue data for providing an indoor location
service of the venue to a user.
Final Act. 3; see also Ans. 3. The Examiner determined that the abstract
idea falls within the “Mental processes” grouping enumerated in the Revised
Guidance. Ans. 3; see also 84 Fed. Reg. at 52 (Section I.C.).
Although Appellant repeatedly states that it “does not concede” that
claim 1 recites an abstract idea (see, e.g., Appeal Br. 15), Appellant does not
present arguments rebutting the Examiner’s determination that it does.
Instead, Appellant proceeds to directly Step 2A Prong Two. Id.
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On the record presented, we are not apprised of error in the
Examiner’s determination, under Step 2A Prong One of the Revised
Guidance, that claim 1 recites an abstract idea. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016) (“The focus of the
asserted claims . . . is on collecting information, analyzing it, and displaying
certain results of the collection and analysis. . . . [W]e have treated
analyzing information by steps go through in their minds or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category.”).
Revised Guidance Step 2A Prong Two
In Prong Two of Step 2A, we determine whether claim 1 as a whole
integrates the recited judicial exception (here, an abstract idea) into a
practical application of the exception.
Appellant’s claim 1 is not ineligible merely because it recites the
abstract idea instructing how to enrich (update/change) venue map data
based on user survey data. Cf. Mayo , 566 U.S. at 71 (“[A] process is not
unpatentable simply because it contains a law of nature or a mathematical
algorithm.”) (quoting Diamond v. Diehr, 450 U.S. 175, 187 (1981)).
One exemplary consideration as to whether a recited abstract idea is
integrated into a practical application is whether additional claim language
“reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field.” 84 Fed. Reg. at 55.
Appellant argues that such is the case here. Appeal Br. 15–16. In particular,
Appellant argues that “the claimed subject matter improves a computerized
mapping system, at least in part, by enabling the system to automatically
generate maps that are more detailed, accurate, and ‘flexible’ based on
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contextual information, even despite changes to a venue over time.” Id. at
16 (quoting Spec. ¶8). Appellant emphasizes the use of “application launch
data,” automation in lieu of “direct human input,” and “data specific to
computer systems.” Id. (emphasis omitted). None of these, however,
demonstrates or reflects an improvement in the functioning of a computer, or
an improvement to other technology or technical field. The claimed method
receives and processes different types of data without reciting a
technological improvement in the way the data is obtained, received, or
analyzed beyond “enriching” it. See Elec. Power, 830 F.3d at 1353
(“Information as such is an intangible.”).
Appellant’s purported technological improvement is an increase in the
efficiency of updating/enriching computerized maps. See Appeal Br. 16 (“In
contrast, absent these specific rules, computerized mapping products could
not be generated in a similarly efficient manner without human
intervention.”). But increased efficiency through the use of conventional
computing processes is not an improvement in computer technology itself.
See, e.g., Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer
implemented steps, there is nothing in the claims themselves that foreclose
them from being performed by a human, mentally or with pen and paper.”);
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324
(Fed. Cir. 2016) (holding that computer-implemented method for
“anonymous loan shopping” was an abstract idea because it could be
“performed by humans without a computer”); Versata Dev. Grp., Inc. v. SAP
Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined
claims that required the use of a computer and still found that the
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underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.”).
Electric Power Group is particularly instructive here. There, the
Federal Circuit held:
[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.
. . .
Inquiry therefore must turn to any requirements for how the
desired result is achieved. But in this case the claims’ invocation
of computers, networks, and displays does not transform the
claimed subject matter into patent-eligible applications. The
claims at issue do not require any nonconventional computer,
network, or display components, or even a “non-conventional
and non-generic arrangement of known, conventional pieces,”
but merely call for performance of the claimed information
collection, analysis, and display functions “on a set of generic
computer components” and display devices.
830 F.3d at 1355. Appellant’s claim 1 likewise does not reflect an
improvement in how the desired results are achieved. Instead, they use
conventional computer components to “receiv[e],” “enrich[],” “stor[e],” and
“generat[e]” data. See, e.g., Appeal Br. 30 (claim 1).
Appellant argues that the results achieved by its invention are better
because they exclude “subjective human factors” that would arise by “a
human map creator . . . conduct[ing] a subjective review of information
about a venue (e.g., directory listings and subjective observations of the
venue), and manually compose a subjective summary of the information that
he reviewed.” Appeal Br. 16–17 (emphasis omitted). This argument is not
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persuasive for two reasons. First, it is not commensurate with scope of
claim 1, which, although not requiring “subjective review of information” or
“subjective human factors,” does not exclude either. Second, and more
importantly, Appellant does not adequately explain how avoiding
“subjective review of information” or “subjective human factors” could
constitute a technological improvement. Appeal Br. 17 (emphasis omitted).
We are not persuaded that it does.
Another exemplary consideration as to whether a recited abstract idea
is integrated into a practical application is whether additional claim language
“implements [the abstract idea] with, or uses [the abstract idea] in
conjunction with, a particular machine or manufacture that is integral to the
claim.” 84 Fed. Reg. at 55. Invoking this consideration, Appellant argues:
the claims specifically recite computer system-related limitations
that are integral to the claim, such that those directed to
“application launch data” (i.e., a concept that could have not
existed prior to the development of computer technology) and the
use of such “application launch data” to enrich venue data in
electronic mapping systems. These aspects have specific
computer-related benefits.
. . . .
That is, aspects of the invention enable a computerized
mapping system to determine information such as a “feature
categorization” of a venue based on “application launch data . . .
indicating an execution of one or more application programs.”
“Application programs” are inextricably tied to computer
technology, and do not have an analog in the pre-computer
world. Thus, the claims are directed to solving problems specific
to computer technology using processes that are also specific to
computer technology (e.g., creating a computerized mapping
product based on data regarding the launching of “application
programs”).
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Appeal Br. 17–18 (block quote of Spec. ¶111 omitted) (emphasis omitted).
Appellant’s argument is not persuasive, in the first instance, because it
relies on a feature described in the Specification (i.e., “feature
categorization”), which is not recited in claim 1. See Ericsson Inc. v. TCL
Commc’n Tech. Holdings Ltd., 955 F.3d 1317, 1325 (Fed. Cir. 2020)
(holding that the specification must always yield to the claim language when
identifying the true focus of a claim); Two-Way Media Ltd. v. Comcast
Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017) (“As with
claim 1 of the ’187 patent, the problem is that no inventive concept resides
in the claims.”). Moreover, “after Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.” DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014). Accordingly, we determine that
claim 1 does not recite any additional elements that integrate the abstract
idea into a practical application.
Revised Guidance Step 2B
In Prong Two of Step 2B, we evaluate the additional limitations of
claim 1, both individually and as an ordered combination, to determine
whether they provide an inventive concept.
Relevant to this part of the eligibility analysis, Appellant “submits that
generating a computerized mapping product at least in part by enriching
venue data based on ‘application launch data,’ is not a well-understood,
routine, or conventional activity in the field of mapping.” Appeal Br. 19
(quoting claim 1). However, “[i]t has been clear since Alice that a claimed
invention’s use of [an] ineligible concept to which it is directed cannot
supply the inventive concept that renders the invention ‘significantly more’
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than that ineligible concept.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d
1281, 1290 (Fed. Cir. 2018). Compliance with the novelty requirement of
§ 102 does not mean that a claim is patent-eligible under § 101. See
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (“But, a claim for a new abstract idea is still an abstract idea.”);
Versata, 793 F.3d at 1335 (holding claims that improved an abstract idea but
did not recite the supposed computer improvements were not patent
eligible); see also Revised Guidance, 84 Fed. Reg. at 55 n.24 (“additional
elements” are claim features beyond the identified judicial exception).
For the foregoing reasons, we affirm the rejection of claim 1 under the
judicial exception to § 101, as well as that of claims 2–9 and 12–14, which
fall therewith.
Independent Claim 15 and
Dependent Claims 16–23 and 26–28
Appellant argues against the rejection of claims 15–23 and 26–28
solely on the basis that they recite (or incorporate through dependency)
“similar subject matter as in claim 1.” Appeal Br. 20. For reasons similar to
claim 1, we likewise affirm the rejection of claims 15–23 and 26–28.
Independent Claim 29 and
Dependent Claims 30–37 and 40–42
Appellant argues against the rejection of claims 29–37 and 40–42
solely on the basis that they recite (or incorporate through dependency)
“similar subject matter as in claim 1.” Appeal Br. 21. For reasons similar to
claim 1, we likewise affirm the rejection of claims 29–37 and 40–42.
Dependent Claims 10, 24, and 38
Claims 10, 24, and 38 recite:
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wherein adding information to the venue data comprises:
determining, from the probe data, that mobile devices
switch on satellite navigation subsystems of the mobile devices
at a portion of the physical structure;
in response, determining that the portion of the physical
structure is exposed space; and
adding a record of the exposed space to the venue data.
Appeal Br. 32–33, 37, 42.
Under Step 2A, Prong Two of the Revised Guidance, Appellant
argues that these additional elements “improve[] a computerized mapping
system.” Appeal Br. 22. Appellant, however, does not identify any
meaningful improvement to the functioning of the computer or other
technological improvement. Rather, Appellant implies that the efficiency
obtained by using a computer in lieu of a human to process and/or update
information makes the claims eligible. See id. (“Absent this specific rule,
computerized mapping products could not be generated in a similarly
efficient manner without human intervention.”). That argument is
inconsistent with the law because using computers to automate manual
activities or perform activities more quickly is not an inventive step. See,
e.g., Mortg., 811 F.3d. at 1324 (holding that computer-implemented method
for “anonymous loan shopping” was an abstract idea because it could be
“performed by humans without a computer”); OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“[R]elying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.”); Bancorp Servs., L.L.C. v.
Sun Life Assur. Co. of Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)
(“[T]he fact that the required calculations could be performed more
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efficiently via a computer does not materially alter the patent eligibility of
the claimed subject matter.”).
Also under Step 2A, Prong Two of the Revised Guidance, Appellant
argues that these “claims are directed to solving problems specific to
computer technology using processes that are also specific to computer
technology (e.g., creating a computerized mapping product by identifying
exposed spaces in a physical structure based the ‘switch[ing] on satellite
navigation subsystems of ... mobile devices at a portion of the physical
structure’).” Appeal Br. 23. But, as the Examiner points out, these
additional limitations merely narrow the abstract idea of, for example, claim
1’s enriching venue map data based on user survey data. Ans. 6. Thus, they
do not qualify as additional elements beyond the abstract idea. Id. at 6–7;
see also 84 Fed. Reg. at 55 n.24 (“additional elements” are claim features
beyond the identified judicial exception). Further, as the Examiner also
points out, these limitations merely indicate a field of use in which to apply
the judicial exception. Ans. 7.
Under Step 2B of the Revised Guidance, Appellant argues the
additional elements recited in these claims are “not well understood, routine,
conventional activity in the field of mapping.” As stated above, however,
“[i]t has been clear since Alice that a claimed invention’s use of [an]
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention ‘significantly more’ than that ineligible
concept.” BSG Tech, 899 F.3d at 1290 .
For the foregoing reasons, we affirm the rejection of claims 10, 24,
and 38.
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Dependent Claims 11, 25, 39, and 43
Appellant argues against the rejection of these claims for reasons
similar to that of claims 10, 24, and 38. And the Examiner similarly
responds that Appellant’s arguments again are based on limitations that
merely narrow the abstract idea recited in the respective base claim and
which do not reflect a technological improvement or tie the abstract idea to a
particular machine. Ans. 7–8.
The Examiner again has the better position. For the foregoing
reasons, we affirm the rejection of claims 11, 25, 39, and 43.
SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–43 101 Judicial Exception 1–43

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